What is the MPEP’s stance on using exemplary language in patent claims?
The Manual of Patent Examining Procedure (MPEP) advises against using exemplary language in patent claims. According to MPEP 2173.05(d), “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim.” The…
Read MoreWhat makes a claim indefinite under 35 U.S.C. 112(b)?
A claim can be considered indefinite under 35 U.S.C. 112(b) if it creates confusion about when direct infringement occurs. The MPEP 2173.05(p) provides an example from the In re Katz case: “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA…
Read MoreWhat are form paragraphs in patent rejections under 35 U.S.C. 112(b)?
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims. According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10,…
Read MoreDoes using phrases like “for example” or “such as” automatically make a claim indefinite?
No, the mere use of phrases like “for example” or “such as” does not automatically render a claim indefinite. The MPEP states: “Note that the mere use of the phrase ‘such as’ or ‘for example’ in a claim does not by itself render the claim indefinite.” However, these phrases can potentially lead to confusion about…
Read MoreWhat is “double inclusion” in patent claims?
“Double inclusion” refers to the inclusion of the same element or component more than once in a patent claim. The Manual of Patent Examining Procedure (MPEP) 2173.05(o) states that there is no per se rule against double inclusion in a claim. As noted in the MPEP: “There is no per se rule that ‘double inclusion’…
Read MoreWhat are the consequences of a claim limitation being interpreted under 35 U.S.C. 112(f)?
When a claim limitation is interpreted under 35 U.S.C. 112(f), it has several important consequences for patent examination and claim scope: Limited interpretation: The claim limitation is interpreted to cover only the corresponding structure, material, or acts described in the specification and their equivalents, rather than any structure that performs the claimed function. Specification dependency:…
Read MoreCan a patent with prolix claims be invalidated after issuance?
Yes, a patent with prolix claims can potentially be invalidated after issuance, particularly on grounds of indefiniteness under 35 U.S.C. 112(b). While the MPEP 2173.05(m) guidance on prolix claims is primarily for examiners during prosecution, the underlying principle of claim clarity remains relevant post-issuance. In post-grant proceedings or litigation, if a court determines that the…
Read MoreHow can I avoid indefiniteness in claims that reference both products and processes?
To avoid indefiniteness in claims that reference both products and processes, follow these guidelines from MPEP 2173.05(p): Ensure the claim is clearly directed to either the product or the process, not both. When referencing a process in a product claim, make it clear that the claim is for the product intended to be used in…
Read MoreWhen should an examiner make a rejection under 35 U.S.C. 112(b) for exemplary claim language?
An examiner should consider making a rejection under 35 U.S.C. 112(b) when exemplary claim language creates uncertainty about the claim’s scope. The MPEP 2173.05(d) states: “In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should…
Read MoreHow does indefiniteness apply to design patent claims?
Indefiniteness in design patent claims is addressed in MPEP 1504.04. The section states: “A claim is indefinite when it is unclear what design applicant is claiming.” This can occur in several ways: When the claim language is vague or ambiguous When the drawings are inconsistent or unclear When there’s a discrepancy between the claim and…
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