MPEP 2173.05 – 112, 2nd (or b) cheat sheet

Chapter 2100 – Patentability

Chapter 2173.05 – Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

MPEP 2173.05 is a great resource for common examples when determining whether claim language is definite or not. 2173.05 is split into a bunch of smaller sections.

Here’s a snippet of each, a cheat-sheet, if you will:

  1. New Terminology
    1. Meaning of every term should be apparent from prior art or applicant’s spec
    2. Clarity and precision
    3. Terms contrary to their ordinary meaning should be clearly redefined in applicant’s spec
  2. Relative Terminology
    1. Terms of degree – Definite within context of invention
    2. Reference to an object that is variable may render a claim indefinite – claiming “a large printer” is not sufficient. How large?
    3. Approximations – Again, depends on context. Terms like “about,” “essentially,” “similar,” “substantially,” and “type” are all going to raise a red flag and should probably be avoided.
    4. Subjective terms – Better to have an objective standard to determine claim scope
  3. Numerical Ranges and Amounts Limitations
    1. Narrow and broader ranges in the same claim – “a predetermined quantity, for example, the maximum capacity”
    2. Open-ended numerical ranges – “up to”
    3. Effective amount – can a person of ordinary skill determine specific values based on applicant’s spec?
  4. Exemplary Claim Language (“for example” or “such as”) – It is unclear if any limitations after exemplary language should be interpreted as a narrowing limitation.
  5. Lack of Antecedent Basis – lack of clarity within a claim – reciting a term (“the lever” in a claim that contains no earlier recitation (“a lever”)
    1. Examiner should suggest corrections to antecedent problems
    2. A claim term which has no antecedent basis in the disclosure is not necessariliy indefinite
    3. A claim is not per se indefinite if the body of the claim recites additional elements which do not appear in the preamble
  6. Reference to Limitations in Another Claim – “The product produced by the method of claim 1…” is acceptable – Possible 112, 4th (or d), issues.
  7. Functional Limitations – Functional language does not, in and of itself, render a claim improper. See 35 U.S.C. 112, sixth (or f).
  8. Alternative Limitations
    1. Markush groups – “selected from the group consisting of A, B, and C”
    2. “Or” terminology – alternative expressions are acceptable
    3. “Optionally” – “containing A, B, and optionally C” is acceptable
  9. Negative Limitations – so long as the boundaries are definite, negative limitations are OK. Negative limitations should be supported by the specification, for example to exclude alternative elements recited in spec.
  10. Old Combination – the 1952 Patent Act allowed the patentability of old inventions have new and improved elements.
  11. Aggregation – Applicant is entitled to know whether claims are being rejected and under which statutes (i.e. 101, 102, 103, 112).
  12. [Reserved]
  13. Prolix – Long recitations where metes and bounds of the claimed subject matter is indeterminable should be rejected.
  14. Multiplicity – Applicant presents an unreasonable number of claims which are repetitious and multipled.
  15. Double Inclusion – If a claim directed to a device that can be read to include the same element twice, the claim may be indefinite
  16. Claims Directed to Product-By-Process or Product and Process
    1. Product-by-Process – A product claim that defines the claimed product in terms of the process by which it is made, is proper.
    2. Product and process in the same claim – A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
  17. “Use” Claims – attempts to claim a process without setting forth any steps is indefinite. “A process for using…”
  18. Omnibus Claim – “A device substantially as shown and described”
  19. Reference to Figures or Tables – Claims are to be complete themselves and references to Figures/Tables should be avoided, but OK in exceptional circumstances.
  20. Chemical Formula – Formulas should not be considered indefinite unless there is an error in the formula.
  21. Trademarks or Trade Names in a Claim – Depends on how the mark/name is being used. The mark/name may be used to identify a source and not the goods themselves.
  22. Mere Function of Machine – A process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.

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