Can method claims reference limitations from apparatus claims?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference: “A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..” Additionally, the MPEP cites a relevant case: “See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).” These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Reference to Another Claim is Acceptable Under Section 112(b) MPEP 2173.05(f) Claim Can Refer to Another Claim Limitation MPEP 2173.05(f) Recommended Dependent Claim Must Comply with Section 112(d) MPEP 2173.05(f) Recommended Claims Must Be Clear and Definite MPEP 2173 Claim Must Be Definite Under Section 112(b) MPEP 2173 Definiteness Requirement for Claims MPEP 2173 Required Claims Must Particularly Point Out and Distinctly Claim the Invention MPEP 2173 Required Claims Must Particularly Point Out and Distinctly Claim the Invention MPEP 2173 Requirement for Clear Claim Language MPEP 2173 Permitted Claims Must Clearly Define Boundaries MPEP 2173 Required Other Related FAQs 5 FAQs Collapse What are some examples of acceptable claim references? When can referencing limitations from another claim lead to rejection? What should examiners consider when reviewing dependent claims? How do...