What is the difference between a product-by-process claim and a claim with both product and process elements?

According to MPEP 2173.05(p), there is a key difference between these two types of claims: Product-by-process claim: This is a product claim that defines the product in terms of the process used to make it. It is considered proper and is not inherently indefinite. The MPEP states, “A product-by-process claim, which is a product claim…

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Can a claim include both a product and a process?

While claims can reference multiple statutory classes of invention, there are specific rules for combining product and process elements. According to MPEP 2173.05(p): A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable, as long as…

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What are the key considerations for patent drafters regarding double inclusion?

Patent drafters should be aware of the nuances surrounding double inclusion when crafting claims. The MPEP 2173.05(o) provides important guidance: “The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.” Key considerations for patent drafters include: Clarity: Ensure that any instance of double inclusion…

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How should patent attorneys approach the use of exemplary language in claims?

Patent attorneys should approach the use of exemplary language in claims with caution. The MPEP 2173.05(d) guidance suggests that examples and preferences are better placed in the specification rather than the claims. When drafting claims: Avoid using phrases like “for example,” “such as,” or similar language that could create ambiguity about the claim scope. If…

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How can applicants overcome a rejection due to unclear use of coloring in international design applications?

When coloring in international design application drawings is not described in the specification, it can lead to a rejection under 35 U.S.C. 112(b) for indefiniteness. To overcome this rejection, applicants can insert a statement in the specification explaining the purpose of the coloring. The MPEP provides the following guidance: “If the coloring identifies matter for…

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