How does the USPTO handle claims that potentially cover inoperative embodiments?
The USPTO’s approach to claims that potentially cover inoperative embodiments is nuanced. The presence of some inoperative embodiments within the scope of a claim does not necessarily render the claim non-enabled. According to the MPEP:
“The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled. The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.” (MPEP 2164.08(b))
However, if a claim covers a significant number of inoperative embodiments and undue experimentation would be required to identify the operative ones, the claim may be rejected as non-enabled. The key factors are the proportion of inoperative embodiments and the level of experimentation required to identify them.
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