What are the key considerations for “lists of alternatives” in patent claims?
When dealing with lists of alternatives in patent claims, there are several key considerations outlined in MPEP 2173.05(h): Proper Markush format: The MPEP states, “A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.” Indefiniteness: The MPEP warns,…
Read MoreWhat are the potential issues with functional limitations in patent claims?
While functional limitations are allowed in patent claims, they can potentially raise issues of indefiniteness. The MPEP notes that “the use of functional language in a claim may fail ‘to provide a clear-cut indication of the scope of the subject matter embraced by the claim’ and thus be indefinite.” Some potential issues include: Claims that…
Read MoreCan an inventor define terms differently from their ordinary meaning?
Yes, an inventor can define terms differently from their ordinary meaning. This concept is known as “lexicography” in patent law. The MPEP explicitly states in MPEP 2173.05(a): “Consistent with the well-established axiom in patent law that a patentee or applicant is free to be his or her own lexicographer, a patentee or applicant may use…
Read MoreHow is the term “substantially” interpreted in patent claims?
The term “substantially” in patent claims is often used to describe a particular characteristic of the claimed invention. According to MPEP 2173.05(b), it is considered a broad term. The interpretation depends on the context and the guidance provided in the specification. For example, in In re Nehrenberg, the limitation “to substantially increase the efficiency of…
Read MoreHow does the term “about” affect claim interpretation?
The term “about” in patent claims requires careful consideration of context. According to MPEP 2173.05(b), “In determining the range encompassed by the term ‘about’, one must consider the context of the term as it is used in the specification and claims of the application.” The interpretation can vary based on the specific circumstances. For example,…
Read MoreWhat is the significance of indefiniteness rejections in relation to specification and claim correspondence?
Indefiniteness rejections play a crucial role in ensuring proper correspondence between the specification and claims. According to MPEP 2173.03: “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the…
Read MoreHow can indefiniteness rejections arise from biological deposit issues in patent applications?
Indefiniteness rejections related to biological deposit issues in patent applications can arise under 35 U.S.C. 112(b). According to MPEP 2411.01: “A rejection for indefiniteness, as applied to a deposit issue, requires the examiner to provide reasons why the terms in the claims and/or scope of the invention are unclear because of an incomplete or inaccurate…
Read MoreWhat makes a claim indefinite when using relative terms?
A claim using relative terms may be rendered indefinite when the scope of the term is not understood when read in light of the specification. The MPEP 2173.05(b) states: “Even if the specification uses the same term of degree as in the claim, a rejection is proper if the scope of the term is not…
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 happens if the specification and claims use inconsistent terminology?
When the specification and claims use inconsistent terminology, it can lead to clarity issues. The MPEP 2173.03 states: “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification…
Read More