What makes a Markush grouping proper?
A Markush grouping is considered proper if the members of the group share both: A “single structural similarity” A common use This requirement can be met in two ways: The alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known…
Read MoreHow does the MPEP address “Markush” groupings in patent claims?
The MPEP addresses “Markush” groupings in patent claims in MPEP 2173.05(h). A Markush grouping is a closed group of alternatives, and is typically expressed as “a material selected from the group consisting of A, B, and C.” The MPEP states: “Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives…
Read MoreHow does the MPEP address the use of “consisting of” vs. “comprising” in alternative limitations?
The MPEP addresses the use of “consisting of” vs. “comprising” in alternative limitations in MPEP 2173.05(h). The distinction is crucial for the definiteness and scope of the claim: “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.”…
Read MoreWhat 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 is a proper Markush grouping?
A proper Markush grouping, as defined in MPEP 803.02, must meet two criteria: The members of the Markush group share a “single structural similarity” The members share a common use The MPEP cites the Supplementary Guidelines, which state: “Where a Markush grouping describes part of a combination or process, the members following ‘selected from the…
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