Can alternative elements disclosed in the specification be excluded in the claims?

Yes, alternative elements disclosed in the specification can be excluded in the claims through negative limitations. The MPEP 2173.05(i) states: “If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This principle is based on the reasoning that if the specification describes the whole, it necessarily describes the…

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How has the view on negative limitations in patent claims evolved over time?

The view on negative limitations in patent claims has evolved significantly over time, becoming more accepting. The MPEP 2173.05(i) provides insight into this evolution: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. […] Some older cases were critical of negative limitations because they tended…

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How do courts view negative limitations in patent claims?

Courts generally view negative limitations in patent claims as acceptable, provided they meet certain criteria. The MPEP 2173.05(i) states: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation.” This represents a shift from older views where courts were sometimes critical of negative limitations. The MPEP…

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How are Board decisions treated in ex parte reexamination proceedings?

Board decisions in ex parte reexamination proceedings are treated similarly to those in regular patent applications. MPEP § 2277 specifies that: “MPEP § 1213 through § 1213.03 relate to decisions of the Board for both applications and ex parte reexamination proceedings.” This means that the procedures and guidelines outlined in these MPEP sections apply equally…

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What is the basis for including negative limitations in patent claims?

The basis for including negative limitations in patent claims must be found in the original disclosure of the patent application. According to MPEP 2173.05(i): “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This…

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