What are the typical circumstances where adequate written description issues arise in patent applications?
The MPEP 2163.03 outlines three typical circumstances where adequate written description issues arise: Original claims: When the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. New or amended claims: When the claims are not supported…
Read MoreCan an original claim lack written description support?
Yes, an original claim can lack written description support. According to MPEP 2163.03: “While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides…
Read MoreHow does MPEP 2114 apply to functional language in apparatus claims?
MPEP 2114 provides guidance on how to evaluate functional language in apparatus claims. The key points are: Functional language in apparatus claims is limited to what the claimed structure is capable of doing, not what it actually does in operation. If the prior art structure is capable of performing the intended use, it meets the…
Read MoreHow does MPEP 2114 differentiate between apparatus claims and method claims?
MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states: “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” This means that for…
Read MoreHow does MPEP 2114 treat recitations of the manner in which an apparatus is intended to be employed?
MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual: “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). This means…
Read MoreHow does the Halliburton case impact functional claim language?
The Halliburton case (Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946)) significantly impacts the interpretation of functional claim language in patent law. Key points include: The case initially prohibited the use of functional language at the exact point of novelty This strict prohibition was later modified by Congress in 35 U.S.C. 112(f)…
Read MoreHow does functional language in original claims affect written description requirements?
Functional language in original claims can lead to written description issues if not properly supported by the specification. According to MPEP 2163.03: “[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.” This means that when claims use functional language to define the invention, the specification must…
Read MoreWhat is the significance of functional language in patent claims?
Functional language in patent claims describes an element in terms of what it does rather than what it is. The MPEP provides guidance on interpreting such language: “Functional claim language may be given patentable weight if it is determined that the prior art structure does not inherently possess the functionally defined limitations of the claim.”…
Read MoreWhat is the relationship between functional language and 35 U.S.C. 112(f)?
The relationship between functional language and 35 U.S.C. 112(f) is crucial in patent claim interpretation. Key aspects include: 35 U.S.C. 112(f) allows for functional claiming in combination with means-plus-function or step-plus-function language It provides a way to use functional language without running afoul of indefiniteness concerns Claims using 112(f) are interpreted to cover the corresponding…
Read MoreAre there any exceptions to the rule against mixing product and process elements in a single claim?
While the general rule discourages mixing product and process elements in a single claim, the MPEP 2173.05(p) does provide some nuance. It states: “In contrast, when a claim recites a product and additional limitations which focus on the capabilities of the system, not the specific actions or functions performed by the user, the claim may…
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