What 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 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 is the basis for rejecting claims that fail to set forth the subject matter the inventor regards as the invention?
A rejection based on the failure of claims to set forth the subject matter that the inventor regards as the invention is appropriate only in specific circumstances. According to MPEP 2172, such a rejection is valid “only where an inventor has stated, somewhere other than in the application as filed, that the invention is something…
Read MoreWhat evidence can show that a claim does not correspond with the inventor’s invention?
Evidence demonstrating that a claim does not correspond in scope with what an inventor regards as their invention can come from various sources. According to MPEP 2172, such evidence may be found in: Contentions or admissions in briefs or remarks filed by the applicant Affidavits filed under 37 CFR 1.132 The MPEP cites specific cases…
Read MoreHow is the agreement between claims and specification considered in patent examination?
The agreement, or lack thereof, between claims and the specification is considered differently depending on the context of the examination. According to MPEP 2172: “Agreement, or lack thereof, between the claims and the specification is properly considered only with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.” This principle is based…
Read MoreHow does MPEP 2144.07 relate to the selection of materials in patent claims?
How does MPEP 2144.07 relate to the selection of materials in patent claims? MPEP 2144.07 is particularly relevant when considering the selection of materials in patent claims. The section states: “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co.…
Read MoreHow does MPEP 2111.04 treat the phrase “configured to” in patent claims?
MPEP 2111.04 does not explicitly address the phrase “configured to” in patent claims. However, it is often treated similarly to “adapted to” or “adapted for.” The interpretation generally depends on the specific context and structure of the claim. According to MPEP 2111.04: “The determination of whether each of these clauses is a limitation in a…
Read MoreWhat is the “Mere Function of Machine” rule in patent law?
The “Mere Function of Machine” rule refers to a principle in patent law that protects process or method claims from being rejected solely based on their relationship to a disclosed machine or apparatus. According to MPEP 2173.05(v): “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35…
Read MoreHow are mental processes defined as abstract ideas in patent law?
Mental processes are the third main category of abstract ideas identified in MPEP 2106.04(a)(2). The MPEP defines mental processes as: “Mental processes” include concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Key points about mental processes as abstract ideas: They can be performed entirely in the human mind or with the…
Read MoreHow are means-plus-function limitations interpreted in interference proceedings?
In interference proceedings, means-plus-function limitations require special consideration. According to MPEP 2301.03: “Claims reciting means-plus-function limitations, in particular, might have different scopes depending on the corresponding structure described in the written description.” This means that even if two claims have identical language, they may not necessarily be drawn to the same invention if they use…
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