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…
Read MoreHow can I avoid indefiniteness in claims that reference both products and processes?
To avoid indefiniteness in claims that reference both products and processes, follow these guidelines from MPEP 2173.05(p): Ensure the claim is clearly directed to either the product or the process, not both. When referencing a process in a product claim, make it clear that the claim is for the product intended to be used in…
Read MoreHow can patent applicants avoid having claim elements classified as insignificant extra-solution activity?
To avoid having claim elements classified as insignificant extra-solution activity, patent applicants should consider the following strategies based on guidance from MPEP 2106.05(g): Ensure that claim elements are integral to the invention’s core purpose Demonstrate how the elements impose meaningful limits on the claim’s scope Show that the elements are more than mere data gathering…
Read MoreWhat is the significance of the Atlas Powder Co. v. E.I. du Pont De Nemours & Co. case in patent examination?
The Atlas Powder Co. v. E.I. du Pont De Nemours & Co. case is significant in patent examination because it established an important principle regarding the presence of inoperative embodiments in patent claims. According to MPEP 2164.08(b): “In Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ…
Read MoreWhat is the “at once envisaged” standard in patent anticipation?
The “at once envisaged” standard in patent anticipation refers to situations where a generic disclosure in prior art can anticipate a claimed species if the species can be immediately and clearly conceived from the disclosure. The MPEP explains: “A reference disclosure can anticipate a claim when the reference describes the limitations but ‘d[oes] not expressly…
Read MoreWhat is the “approximation” term in patent claims?
What is the “approximation” term in patent claims? The term “approximation” in patent claims is a type of relative terminology that can be used to describe a range or value. According to MPEP 2173.05(b), “approximation” terms are acceptable in patent claims when the degree of precision appropriate for the subject matter is known to one…
Read MoreCan applicants be their own lexicographers in patent claims?
Yes, applicants can be their own lexicographers in patent claims. According to MPEP 2173.01: “A fundamental principle contained in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is that applicants are their own lexicographers. They can define in the claims what the inventor or a joint inventor regards as the invention essentially in…
Read MoreWhat is anticipation of ranges in patent law?
Anticipation of ranges in patent law refers to situations where a prior art reference discloses a range that overlaps with or includes the range claimed in a patent application. According to MPEP 2131.03, a claim can be anticipated if the prior art discloses a specific example within the claimed range or if it teaches a…
Read MoreHow does the USPTO handle antecedent basis issues in Markush groups?
The USPTO has specific guidelines for handling antecedent basis issues in Markush groups, which are alternative limitations in patent claims. According to MPEP 2173.05(e): “A Markush group that lists alternative members does not provide antecedent basis for a later claim to one of the members as a individual element. For example, if a claim recites…
Read MoreCan a patent owner amend claims after a final rejection in reexamination?
While a patent owner can submit amendments after a final rejection in reexamination, they do not have an absolute right to amend claims at this stage. The MPEP states: It should be kept in mind that a patent owner cannot, as a matter of right, amend any finally rejected claims, add new claims after a…
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