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 2173.05 – 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 – 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

MPEP 2150 – FITF

Chapter 2100 – Patentability

Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor to File Provisions of the Leahy-Smith America Invents Act (AIA)

AIA revised 102 and thereby changed what prior art is available during examination. None of these changes apply to pre-AIA cases.
Pre-AIA cases – Any app filed before March 16, 2013
Pre-AIA AKA First to invent cases are still subject to, most commonly, the 102(a), (b), (e), and 103(a) rejections we’re used to. If any claim in an app has priority to an effective filing date before March 16, 2013 (including PCT), it is a pre-AIA application.
First to invent essentially means inventors used to have a grace period to file an application after conception/reduction to practice of their invention to actually file an application. If an inventor could show due diligence, they could file an affidavit and “swear behind” references cited by an examiner in an art rejection.
Conception – think up idea
Actual reduction to practice – make invention
Contructive reduction to practice – file patent app
AIA cases – Any app filed on or after March 16, 2013
Statutes behind 102 and 103 are dissected elsewhere for another day… key takeaway here is that it is always in the best interest of an inventor to file ASAP!
Further reading:
MPEP 706.02 – Rejection on Prior art (
MPEP 2159 – determine whether an application is subject to examination under FITF provisions (
MPEP 2131-2138 – examination of applications subject to pre-AIA 35 USC 102 (


Hello, world!

Welcome to my first post.

To keep sharp in my profession, I generally try to pick at least one chapter of the MPEP to read/review/digest every day. As part of this process, I’ve decided to share it here for easy access and review. I also plan on sharing relevant information. Those either studying to become a patent agent/examiner or are new to patent law may find this blog helpful. I certainly believe in the sharing of knowledge and the idea that we’re all in this together. That being said, I’ll leave the more complex matters to other sites (i.e. PatentlyO and IPWatchdog).

MPEP – Manual of Patent Examining Procedure (BitLaw or USPTO)