How does the MPEP treat terms of degree in patent claims?

The MPEP addresses terms of degree in patent claims in MPEP 2173.05(b). Terms of degree are relative terms that require careful consideration to determine if they are definite. The MPEP states: “Terms of degree are not necessarily indefinite. […] If the specification does not provide some standard for measuring that degree, a determination must be…

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How does the written description requirement relate to means-plus-function claim limitations?

Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03: “A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.” However,…

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Can a Markush group in a patent claim be indefinite?

Yes, a Markush group in a patent claim can be indefinite under certain circumstances. The MPEP 2173.05(h) states: “In certain circumstances, however, a Markush group may be so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention. For example, if a claim defines a chemical compound using…

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Can a Markush claim be rejected as indefinite?

Yes, a Markush claim can be rejected as indefinite under 35 U.S.C. 112(b) if one skilled in the art cannot determine the metes and bounds of the Markush claim due to an inability to envision all of the members of the Markush grouping. This typically occurs when: The list of alternatives is not a closed…

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What is “lack of antecedent basis” in patent claims?

“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e): “The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or…

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