How is an improper Markush grouping rejection addressed?

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.

An improper Markush grouping rejection can be addressed in several ways:

1. Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
2. Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
3. Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
4. Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.

The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.