What is the difference between inherent and implied antecedent basis in patent claims?
In patent claims, there are two types of acceptable antecedent basis that don’t require explicit introduction: inherent and implied antecedent basis. Inherent antecedent basis occurs when the claim element is necessarily present in the claimed subject matter. For example, “the outer surface” of a sphere doesn’t need explicit introduction because a sphere inherently has an…
Read MoreCan inherent components have antecedent basis without explicit mention?
Yes, inherent components of elements recited in a claim can have antecedent basis without explicit mention. The MPEP 2173.05(e) provides an example: “Inherent components of elements recited have antecedent basis in the recitation of the components themselves. For example, the limitation ‘the outer surface of said sphere’ would not require an antecedent recitation that the…
Read MoreHow can inherent antecedent basis be established in patent claims?
How can inherent antecedent basis be established in patent claims? Inherent antecedent basis can be established in patent claims when the nature of a claimed element is such that it is understood to inherently possess certain components. The MPEP 2173.05(e) provides guidance on this: “Inherent components of elements recited have antecedent basis in the recitation…
Read MoreWhat information is included in an Inter Partes Reexamination Certificate?
An Inter Partes Reexamination Certificate contains specific information about the reexamined patent. MPEP 2690 outlines the following details: The title “INTER PARTES REEXAMINATION CERTIFICATE” An ordinal number indicating its sequence The original patent number followed by a kind code suffix The date of issuance The title of the invention Name of the inventor Current classification…
Read MoreCan some claims in a patent remain valid if inequitable conduct is found?
No, according to MPEP 2016, if inequitable conduct is found, it affects all claims in the patent. The MPEP cites the case J. P. Stevens & Co. v. Lex Tex Ltd., which states: “Once a court concludes that inequitable conduct occurred, all the claims — not just the particular claims in which the inequitable conduct…
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 is the significance of In re Rasmussen in relation to new matter?
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06: “In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)” This case established an important principle: When new matter is added to the claims, the appropriate action is to reject the claims…
Read MoreWhat is the significance of In re Kelly in understanding double inclusion?
The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows: “Automatic reliance upon a ‘rule against double inclusion’ will lead to as…
Read MoreWhat is the importance of clear terminology in patent claims?
Clear terminology in patent claims is crucial for several reasons: It ensures that the meaning of every term used in a claim is apparent from the prior art or from the specification and drawings. It helps define the metes and bounds of the claimed invention. It allows for the broadest reasonable interpretation during patent examination.…
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