How does prolixity in patent claims relate to indefiniteness?
Prolixity in patent claims is closely related to indefiniteness, which is a ground for rejection under 35 U.S.C. 112(b). According to MPEP 2173.05(m), claims are considered prolix when they are so wordy or contain so many unnecessary details that “the scope of the claimed invention is rendered indefinite thereby.” When a claim is prolix, it…
Read MoreWhat 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…
Read MoreCan 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…
Read MoreWhat 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…
Read MoreHow 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…
Read MoreHow are partial structures of chemical compounds treated in patent claims?
Partial structures of chemical compounds in patent claims are not automatically considered indefinite. The MPEP 2173.05(t) provides guidance on this matter: “A claim to a chemical compound is not indefinite merely because a structure is not presented or because a partial structure is presented.” This approach is exemplified in the case of In re Fisher,…
Read MoreHow 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…
Read MoreWhat is an “omnibus claim” and how is it addressed in patent examination?
An “omnibus claim” is a type of claim that fails to point out what is included or excluded by the claim language. The MPEP provides a specific form paragraph (7.35) to address omnibus claims in patent examination. According to the MPEP, an example of an omnibus claim is: “A device substantially as shown and described.”…
Read MoreHow does the MPEP address the use of trademarks in patent claims?
The MPEP addresses the use of trademarks in patent claims in MPEP 2173.05(a). According to the manual: “If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA…
Read MoreHow does the MPEP address “or the like” phrases in patent claims?
The MPEP addresses the use of “or the like” phrases in patent claims in MPEP 2173.05(h). The section cautions against using such phrases as they can lead to indefiniteness: “Use of the phrase “or the like” or “or similar meaning” renders a claim indefinite if the metes and bounds of the claim are not clear.”…
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