Can an applicant be their own lexicographer?
Yes, an applicant can act as their own lexicographer. The MPEP states, “An applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary…
Read MoreWhat constitutes a ‘particular machine’ in patent claims?
A ‘particular machine’ in patent claims refers to a device that is integral to the execution of the claimed method and provides more than just a generic application of a judicial exception. The MPEP 2106.05(b) provides guidance on determining whether a machine is ‘particular’ enough to integrate a judicial exception into a practical application or…
Read MoreHow are partial structures of chemical compounds treated in patent claims?
Partial structures of chemical compounds in patent claims are not automatically considered indefinite. The MPEP 2173.05(t) provides guidance on this matter: “A claim to a chemical compound is not indefinite merely because a structure is not presented or because a partial structure is presented.” This approach is exemplified in the case of In re Fisher,…
Read MoreCan a party lose on one issue but not on another in a patent interference?
Yes, it is possible for a party to lose on one issue but not on another in a patent interference proceeding. The MPEP 2308.03(a) clearly states: “A party may lose on one issue, yet not lose on a different issue.” This means that the outcome of an interference can be nuanced, with different determinations made…
Read MoreWhat are the recommended practices for organizing a detailed explanation in a supplemental examination request?
The MPEP recommends the following practices for organizing a detailed explanation in a supplemental examination request: Use headings and subheadings to ensure clarity. Identify each item of information and which claims are being discussed under separate headings. Use subheadings for each independent claim and its associated dependent claims. Provide clear statements indicating which claims are…
Read MoreWhat is the “ordinary and customary meaning” in patent claim interpretation?
What is the “ordinary and customary meaning” in patent claim interpretation? The “ordinary and customary meaning” in patent claim interpretation refers to the meaning that a term would have to a person of ordinary skill in the art at the time of the invention. This concept is fundamental to claim construction and is outlined in…
Read MoreWhat are “open-ended” numerical ranges in patent claims?
What are “open-ended” numerical ranges in patent claims? “Open-ended” numerical ranges in patent claims refer to ranges that have only one defined boundary. The Manual of Patent Examining Procedure (MPEP) 2173.05(c) states: “Open-ended numerical ranges should be carefully analyzed for definiteness.” Examples of open-ended ranges include: “greater than 5” “at least 10” “below 100” These…
Read MoreWhat is the one-year rule in pre-AIA 35 U.S.C. 135(b)?
The one-year rule in pre-AIA 35 U.S.C. 135(b) sets time limits for making claims that are the same as, or for substantially the same subject matter as, claims in an issued patent or published application. Specifically: For issued patents: A claim cannot be made in any application unless it’s made prior to one year from…
Read MoreWhat is the significance of the one-year rule in interference proceedings?
The one-year rule in interference proceedings, as outlined in pre-AIA 35 U.S.C. 135(b), imposes time limitations on when certain claims can be made in relation to issued patents or published applications. MPEP § 2304.02(c) explains: “If an application claim interferes with a claim of a patent, and the claim was added to the application by…
Read MoreWhat happens if a critical feature is not included in the claims?
If a critical feature disclosed in the specification is not included in the claims, it may lead to a rejection under 35 U.S.C. 112(a). The MPEP 2174 explains: “If the specification discloses that a particular feature or element is critical or essential to the practice of the invention, failure to recite or include that particular…
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