How does the MPEP address claims that omit essential elements or steps?
The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For omitted steps, form paragraph 7.34.12 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
For omitted elements, form paragraph 7.34.13 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
When using these form paragraphs, examiners are instructed to recite the omitted steps or elements and provide a rationale for considering them critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter as essential to the invention.
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