MPEP 901.01 – Canceled Matter

Chapter 900 – Prior Art, Classification, and Search

Chapter 901.01 – Canceled Matter in U.S. Patent Files

In U.S. Patents and U.S. application publications (AKA PGPubs), canceled matter in the application file is not a proper reference as of the filing date under pre-AIA 35 U.S.C. 102(e).

In U.S. Patents and U.S. application publications (AKA PGPubs), canceled matter in the file wrapper may be used as prior art as of the patent or publication date because it, the canceled matter, constitutes prior public knowledge/prior public availability under pre-AIA 35 U.S.C. 102(a) or 35 U.S.C. 102(a)(1).



MPEP 2173.06 – Compact Prosecution

Chapter 2100 – Patentability

Chapter 2173.06 – Practice Compact Prosecution

The old adage here is the earlier indefiniteness issues are identified in an application during examination, the faster an application can be pushed towards disposal (allowance, abandonment). Claim interpretation and a satisfactory explanation of this interpretation by the patent examiner goes a long way, especially when it comes to an applicant trying to understand prior art rejections made by the Office.

There are two key parts of this section:


As mentioned above, clear articulation of each and every rejection (101, 102, etc) should be made in a first action.


If there is uncertainty in a claim (i.e. terms of degree, antecedent basis), best effort by the Office should be made to:

  1. Set forth a 112, 2nd (or b), rejection and explain the claim interpretation being made for prior art rejections.
  2. Set forth prior art rejections based on the explained claim interpretation.



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.

MPEP 2173.04 – Breadth is not indefiniteness

Chapter 2100 – Patentability

Chapter 2173.04 – Breadth is not Indefiniteness

What is claim breadth?

Claim breadth is essentially the scope of the claimed subject matter.

Why might claim breadth cause a question of indefiniteness?


35 USC 112, second paragraph/(b), states: “a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention.”

If a broad claim, like a genus claim, covers multiple species, the claim wouldn’t necessarily be considered indefinite, unless it isn’t clear what species are included.

In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) (“Breadth is not indefiniteness.”).  Read it here.

Undue breadth occurs when a claim is just too broad and it is simply unclear what the applicants regard as their invention. Without proper support in the specification, applicant’s specification may be flagged as a non-enabling disclosure and be subject to further rejections, like 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejections. See MPEP 2164.

MPEP 2173.03 – Specification – Claims relationship

Chapter 2100 – Patentability

Chapter 2173.03 – Correspondence Between Specification and Claims

37 CFR 1.75(d)(1) – The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.

What is key here is that the claims must have clear support/antecedent basis in the applicant’s specification. A person of ordinary skill in the art should be able to ascertain claim term meanings by simply consulting the specification. When support is lacking, the specification may be objected to. See MPEP § 608.01(o) and MPEP § 2181, subsection IV.

A claim may be considered indefinite if there is an inconsistency between the claimed subject matter and applicant’s specification, even if the claim appears to be clear on its face.

MPEP 2173.02 – Definite?

Chapter 2100 – Patentability

Chapter 2173.02 – Determining whether claim language is definite


FITF – effective filing date

pre-AIA – time invention was made

“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton Energy Servs., Inc v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008)

Whether a claim is indefinite is determined by whether or not a person of ordinary skill in the art would understand what is being claimed when read in light of the specification.

I. Claims under examination vs. patented claims

Claims under prosecution are given broadest reasonable interpretation (BRI).

Patented claims, however, are interpreted based on a fully developed prosecution record.

Claim breadth -> A broad claim is not indefinite merely because it encompasses a wide scope of subject matter.

II. Threshold requirements of clarity and precision

The requirement for definiteness is not a question as to whether or not there are better modes of expression (i.e. better claim language). Examiners are encouraged to make suggestions to improve claim clarity/precision, but should not insist on their own personal preferences..

Claim definiteness is analyzed in light of:

A) The content of the particular application disclosure,

B) The teachings of the prior art, and

C) The claim interpretation that would be given by one of ordinary skill in the art at the time the application was made.

III. Resolving indefinite claim language

A. Establish clear record – Examiners should clearly communicate reasons for finding claims indefinite, establish these reasons on the record (i.e. via Office actions), and provide any findings to support claim indefiniteness rejections.

B. An Office action should provide a sufficient explanation

  • Office actions should identify specific terms/phrases that are deemed indefinite.

C. Provide claim interpretation in Reasons for Allowance when record is unclear

  • Clarification by the examiner may be needed at time of allowance with respect to claim interpretation. The claim interpretation used by the examiner in determining allowability over the prior art may be explained at time of allowance in the reasons for allowance. See MPEP 1302.14.

D. Open lines of communication with the applicant

  • If the sole remaining issue in an application is a claim interpretation issue, it is beneficial for all parties to conduct an interview to resolve all outstanding issues in a timely manner.



MPEP 2173.01 – BRI

Chapter 2100 – Patentability

Chapter 2173.01 – Interpreting the Claims

Fundamental principle-> Applicants are their own lexicographers. This essentially means that applicants can use claim terms that have special meaning, however they better define those terms clearly in the specification. This includes functional language, alternative expressions, negative limitations (not recommended!!!), or any style of expression or format of claim which makes clear the boundaries of the subject matter for which protection is sought.

Broadest Reasonable Interpretation – BRI

BRI of claim language – how would a person of ordinary skill in the art interpret the claim language?

plain meaning – the ordinary and customary meaning of a term as evidenced by claims themselves, the specification, drawings, and prior art.

35 USC 112(f) or pre-AIA 35 USC 112, sixth paragraph

If a claim invokes 112(f) or pre-AIA 35 USC 112, sixth paragraph, the claim must “be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Whether or not a claim invokes 112(f) or 112, sixth paragraph, is covered in MPEP 2181.


MPEP 2173 – Distinctiveness matters!

Chapter 2100 – Patentability

Chapter 2173 – Claims Must Particularly Point Out and Distinctly Claim the Invention

This week, let’s walk through Chapter 2173 of the MPEP. 35 USC 112, second paragraph, rejections can affectionately be described as “low hanging fruit” when it comes to rejections made by the Patent Office. Think indefiniteness, terms of degree, approximation, or antecedent basis (or lack thereof), among others.

35 USC 112(b) or pre-AIA 35 USC 112, second paragraph, requires that a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the application regards as his or her invention. What this essentially means is that the scope and boundaries of the claims should be clear in view of the filed specification.

Generally, 112 rejections can be easily overcome by argument and/or minor amendment, or via Examiner’s Amendment. In a perfect world, the Office will provide clear guidance (See MPEP 2173.02(II)) as to how an indefiniteness rejection may be overcome.  Claim definiteness ensures that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent.


(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.


[second paragraph] The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.


MPEP 1502.01 – Design vs. Utility

MPEP 1500 – Design Patents

MPEP 1502.01 – Distinction between design and utility patents

Utility -> Protects the way an article is used and works (35 USC 101)

Design -> Protects the way an article looks (35 USC 171) – Ornamental appearance (shape/configuration)

Common differences:

  1. Patent Term – Utility (20 years from earliest effective filing date); Design (Based on date of grant; 14 years if filed prior to May 13, 2015, 15 years if filed on or after May 13, 2015).
  2. Maintenance fees – Utility (required); Design (none)
  3. Claims – Utility (one or more); Design (one)
  4. Restriction – Utility (discretionary by examiner); Design (required)
  5. International – Utility (PCT); Design (Hague Agreement)
  6. Foreign priority – Utility (file within 12 months); Design (file within 6 months)
  7. Provisional – Utility (Yes); Design (No)
  8. RCE – Utility (Yes); Design (No)
  9. CPA – Utility (No); Design (Yes –  See – 37 CFR 1.53(d)(1))
  10. Publication under 35 USC 122(b)(2) – Utility (Yes); Design (No).



MPEP 2104 & “the height of abstraction”

MPEP 2100 – Patentability

MPEP 2104 – Patentable Subject Matter

35 U.S.C. 101 – Inventions patentable

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title.”

The 101 statute has four requirements:

  1. One and only one patent may be obtained for an eligible invention. Statutory double patenting -> MPEP 804
  2. Before Sept. 16, 2012, the inventor was the applicant. On or after Sept. 16, 2012, all inventors must be identified. Inventorship -> MPEP 2137.01
  3. The invention must fall within one of the four statutory categories of invention. Subject matter eligibility -> MPEP 2106
  4. The invention must have utility (quality or condition of being useful). Utility -> MPEP 2107

Four statutory categories of invention:

  1. process
  2. machine
  3. manufacture
  4. composition of matter

Alice strikes again. The Federal Circuit affirmed a lower court’s ruling that a FormFree Holdings Corp. patent (U.S. 8,762,243) is invalid for claiming only abstract ideas.

Claim 1:

1. A computer-implemented method for providing certified financial data indicating financial risk about an individual, comprising:
(a) receiving a request for the certified financial data;
(b) electronically collecting financial account data about the individual from at least one financial source,
(c) transforming the financial account data into a desired format;
(d) validating the financial account data by applying an algorithm engine to the financial account data to identify exceptions, wherein the exceptions indicate incorrect data or financial risk;
(e) confirming the exceptions by collecting additional data and applying the algorithm engine to the additional data,
(f) marking the exceptions as valid exceptions when output of the algorithm engine validates the exceptions; and
(g) generating, using a computer, a report from the financial account data and the valid exceptions,
wherein the financial account data comprises at least one of real-time transaction data, real time balance data, historical transaction data, or historical balance data; and the algorithm engine identifies a pattern of financial risk; the method is computer implemented, and steps (c), (e), and (f) are executed via the computer or a series of computers.

“…a method for collection, analysis, and generation of information reports, where the claims are not limited to how the collected information is analyzed or reformed, is the height of abstraction.”

Fed. Circ. Affirms Credit Report Patent Invalid Under Alice