How do examiners evaluate functional limitations in patent claims?
Examiners evaluate functional limitations in patent claims by considering several factors to determine if the language is sufficiently definite. The MPEP outlines three key considerations:
- Whether there is a clear indication of the scope of the subject matter covered by the claim.
- Whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained.
- Whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.
Examiners also consider whether the functional limitation complies with the written description and enablement requirements of 35 U.S.C. 112(a), which is a separate issue from definiteness under 35 U.S.C. 112(b).
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2173.05(G) - Functional Limitations,
Patent Law,
Patent Procedure