What is the “quid pro quo” for using means-plus-function claim language?
The “quid pro quo” for using means-plus-function claim language refers to the trade-off between the convenience of using such language and the duty to link or associate structure to function. This concept is explained in MPEP 2182, which cites the Federal Circuit case B. Braun Medical, Inc. v. Abbott Labs: “We hold that, pursuant to…
Read MoreWhat is the purpose of the statement applying prior art in an inter partes reexamination request?
The purpose of the statement applying prior art in an inter partes reexamination request is to explain how the cited prior art is applicable to the claims of the patent for which reexamination is requested. According to MPEP 2617: “The request must include a statement applying the cited prior art (the patents and printed publications)…
Read MoreWhat is the purpose of publishing a representative claim in the Official Gazette notice for an inter partes reexamination certificate?
The purpose of publishing a representative claim in the Official Gazette notice for an inter partes reexamination certificate is to provide a quick overview of the patent’s subject matter and any changes that may have occurred during the reexamination process. According to MPEP 2691: “Additionally, a representative claim will be published along with an indication…
Read MoreWhat is the purpose of patent examination regarding claim clarity?
Patent examination serves multiple purposes, with claim clarity being a crucial aspect. According to MPEP 2171: “Although an essential purpose of the examination process is to determine whether or not the claims define an invention that is both novel and nonobvious over the prior art, another essential purpose of patent examination is to determine whether…
Read MoreWhat is the purpose of functional limitations in patent claims?
The purpose of functional limitations in patent claims is to define an element in terms of what it does rather than what it is. According to MPEP 2173.05(g), “A functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or…
Read MoreWhat is the purpose of providing a full copy of the printed patent in a reexamination request?
Providing a full copy of the printed patent in a reexamination request serves multiple important purposes. As stated in MPEP 2219: “A full copy of the printed patent (including the front page) would be used to provide the abstract, drawings, specification, and claims of the patent for the reexamination request and the resulting reexamination proceeding.“…
Read MoreWhat is the purpose of antecedent basis in patent claims?
What is the purpose of antecedent basis in patent claims? The purpose of antecedent basis in patent claims is to ensure clarity and definiteness in claim language. According to MPEP 2173.05(e): “The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or…
Read MoreCan the prosecution history affect how the preamble is interpreted?
Yes, the prosecution history can significantly affect how the preamble is interpreted. According to MPEP 2111.02: “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” This…
Read MoreHow are proposed amendments treated in the decision on a reexamination request?
When a patent owner includes proposed amendments with a reexamination request, the decision on the request is made based on the original patent claims, not the proposed amendments. MPEP 2221 states: “The request should be decided on the wording of the patent claims in effect at that time (without any proposed amendments). The decision on…
Read MoreWhat is a proper Markush group in patent claims?
What is a proper Markush group in patent claims? A proper Markush group in patent claims is a closed group of alternatives. According to MPEP 2117, “A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do…
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