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…
Read MoreHow does the MPEP address the use of “substantially” in patent claims?
The MPEP addresses the use of “substantially” in patent claims in MPEP 2173.05(b). The term is often used to mean “the same as if fully met,” as in “substantially horizontal.” The MPEP states: “The term ‘substantially’ is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is…
Read MoreWhat does the MPEP say about subjective terms in patent claims?
The MPEP addresses subjective terms in patent claims in MPEP 2173.05(b). Subjective terms can be problematic because they may not have a well-defined or universally accepted meaning. The MPEP states: “When a subjective term is used in the claim, the examiner should determine whether the specification supplies some standard for measuring the scope of the…
Read MoreWhat does the MPEP say about using the term “about” in patent claims?
The MPEP addresses the use of the term “about” in patent claims in MPEP 2173.05(b). The term is considered a relative term that must be interpreted in the context of the claim and specification. The MPEP states: “The term ‘about’ avoids a strict numerical boundary to the specified parameter. See Ortho-McNeil Pharmaceutical, Inc. v. Caraco…
Read MoreWhat 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 MoreHow 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,…
Read MoreWhat rejections should be considered for unsupported means-plus-function limitations?
When a means- (or step-) plus-function limitation in a claim is not supported by corresponding structure, material, or acts in the specification, the examiner should consider the following rejections under 35 U.S.C. 112: Enablement (35 U.S.C. 112(a)): If the skilled artisan would not know how to make and use the invention without a description of…
Read MoreCan 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…
Read MoreCan 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…
Read MoreWhat 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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