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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 SECTION SUMMARY This section discusses specific topics related to issues under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 second paragraph.

 

MPEP SECTION SUMMARY The meaning of every term should be apparent. The requirement for clarity and precision must be balanced with the limitations of the language. Terms used contrary to their ordinary meaning must be clearly redefined in the written description.

MPEP SECTION SUMMARY This section covers relative terminology. Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification. Reference to an object that is variable may render a claim indefinite. This section gives further details and examples of specific terms commonly used in claims including; about, essentially, similar, substantially, type, and a few additional terms. There is also a brief discussion on subjective terms. When a subjective term is used in the claim, the examiner should determine whether the specification supplies some standard for measuring the scope of the term, similar to the analysis for a term of degree.

The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112, second paragraph.

 
I.   TERMS OF DEGREE

Terms of degree are not necessarily indefinite.

When a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree.

• Applicant may provide evidence to overcome an indefiniteness rejection.

II.   REFERENCE TO AN OBJECT THAT IS VARIABLE MAY RENDER A CLAIM INDEFINITE

A claim may be rendered indefinite by reference to an object that is variable.

• For example, the Board has held that a limitation in a claim to a bicycle that recited “said front and rear wheels so spaced as to give a wheelbase that is between 58 percent and 75 percent of the height of the rider that the bicycle was designed for” was indefinite because the relationship of parts was not based on any known standard for sizing a bicycle to a rider, but on a rider of unspecified build let alone that they be listed in the claims.

III. APPROXIMATIONS

A. “About”

In determining the range encompassed by the term "about", one must consider the context of the term as it is used in the specification and claims of the application.

• The court held that a limitation defining the stretch rate of a plastic as “exceeding about 10% per second” is definite because infringement could clearly be assessed through the use of a stopwatch.
• However, the court held that claims reciting “at least about” were invalid for indefiniteness where there was close prior art and there was nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term “about.”

B. “Essentially”

The phrase “a silicon dioxide source that is essentially free of alkali metal” was held to be definite because the specification contained guidelines and examples that were considered sufficient to enable a person of ordinary skill in the art to draw a line between unavoidable impurities in starting materials and essential ingredients.

• The court further observed that it would be impractical to require applicants to specify a particular number as a cutoff between their invention and the prior art.

C. “Similar”

The term “similar” in the preamble of a claim that was directed to a nozzle “for high-pressure cleaning units or similar apparatus” was held to be indefinite since it was not clear what applicant intended to cover by the recitation “similar” apparatus.

D. “Substantially”

The term “substantially” is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term.

• The court held that the limitation “to substantially increase the efficiency of the compound as a copper extractant” was definite in view of the general guidelines contained in the specification.

E. “Type”

The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite.

IV.   SUBJECTIVE TERMS

When a subjective term is used in the claim, the examiner should determine whether the specification supplies some standard for measuring the scope of the term, similar to the analysis for a term of degree.

Some objective standard must be provided in order to allow the public to determine the scope of the claim.

A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite.

MPEP SECTION SUMMARY This section covers the topic of numerical ranges and amounts limitations. Generally, the recitation of specific numerical ranges in a claim does not raise an issue of whether a claim is definite. Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible.

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Open-ended numerical ranges should be carefully analyzed for definiteness.

• For example, when an independent claim recites a composition comprising “at least 20% sodium” and a dependent claim sets forth specific amounts of nonsodium ingredients which add up to 100%, apparently to the exclusion of sodium, an ambiguity is created with regard to the “at least” limitation (unless the percentages of the nonsodium ingredients are based on the weight of the nonsodium ingredients).

The common phrase “an effective amount” may or may not be indefinite.

• The proper test is whether or not one skilled in the art could determine specific values for the amount based on the disclosure.
  
  

MPEP SECTION SUMMARY Examples of claim language which have been held to be indefinite because the intended scope of the claim was unclear are: “R is halogen, for example, chlorine”; “material such as rock wool or asbestos”; “lighter hydrocarbons, such, for example, as the vapors or gas produced”; and “normal operating conditions such as while in the container of a proportioner” The mere use of the phrases “such as” or “for example” does not by itself render a claim indefinite.

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MPEP SECTION SUMMARY A claim is indefinite when it contains words or phrases whose meaning is unclear. The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.

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Inherent components of elements recited have antecedent basis in the recitation of the components themselves.

• The limitation 'the outer surface of said sphere' would not require an antecedent recitation that the sphere have an outer surface.
• There can be no dispute that mathematically an inherent characteristic of an ellipse is a major diameter.

MPEP SECTION SUMMARY A claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing under 35 U.S.C. 112, second paragraph.

MPEP SECTION SUMMARY A claim term is functional when it recites a feature ‘‘by what it does rather than by what it is.’’ This section covers functional limitations in further detail.

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Unlike means‐plus‐function claim language that applies only to purely functional limitations, functional claiming often involves the recitation of some structure followed by its function.

The use of functional language in a claim may fail ‘‘to provide a clear‐cut indication of the scope of the subject matter embraced by the claim’’ and thus be indefinite.

Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure.

A single means claim covering every conceivable means for achieving the stated result was held to be invalid under § 112, ¶ 1 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.

Claim language like the following can lead to a 112, 1 rejection because it's not specific enough:

‐‘‘fragile gel’’
‐comparatively large grains
‐commercially uniform
‐comparatively small
‐‘‘spongy’’ and ‘‘porous’’

The following is an example of claim language that was found to be specific enough and was not rejected under 112, 1:

• A general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether a process uses a silicon dioxide source ‘essentially free of alkali metal’

An examiner will consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous:

(1) Whether there is a clear cut indication of the scope of the subject matter covered by the claim;
(2) whether the language sets forth well‐defined boundaries of the invention or only states a problem solved or a result obtained; and
(3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.

The primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise.

During prosecution, the applicant may resolve the ambiguities of a functional limitation in a number of ways. For example:

(1) ‘‘The ambiguity might be resolved by using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature;’’
(2) applicant could demonstrate that the ‘‘specification provide[s] a formula for calculating a property along with examples that meet the claim limitation and examples that do not;’’
(3) applicant could demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied; or
(4) applicant could amend the claims to recite the particular structure that accomplishes the function.

MPEP SECTION SUMMARY This section covers alternative limitations including Markush groups, 'or' terminology, and the use of the term 'optionally'. A Markush claim is commonly formatted as: ‘‘selected from the group consisting of A, B, and C;’’ Alternative expressions using “or” are acceptable, such as “wherein R is A, B, C, or D.” An alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term “optionally.”

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I.   MARKUSH GROUPS

A claim which recites a list of alternatives to define a limitation is an acceptable claim construction which should not necessarily be rejected as confusing under 35 U.S.C. 112(b) or as improper.

• Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, and C” or “wherein the material is A, B, or C”).
• Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims.

The listing of specified alternatives within a Markush claim is referred to as a Markush group or Markush grouping. 

• A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. 
• If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group “comprising” or “consisting essentially of” the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.

If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). 

A Markush grouping may include a large number of alternatives, and as a result a Markush claim may encompass a large number of alternative members or embodiments, but a claim is not necessarily indefinite under 35 U.S.C. 112(b) for such breadth. 

• In certain circumstances, however, a Markush group may be so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention.
• For example, if a claim defines a chemical compound using one or more Markush groups, and that claim encompasses a massive number of distinct alternative members, the claim may be indefinite under 35 U.S.C. 112(b) if one skilled in the art cannot determine its metes and bounds due to an inability to envision all of the compounds defined by the Markush group(s).
• In such a circumstance, a rejection of the claim for indefiniteness under 35 U.S.C. 112(b) is appropriate.

The use of Markush claims of diminishing scope should not, in itself, be considered a sufficient basis for objection to or rejection of claims.

• However, if such a practice renders the claims indefinite or if it results in undue multiplicity, an appropriate rejection should be made.

Similarly, the double inclusion of an element by members of a Markush group is not, in itself, sufficient basis for objection to or rejection of claims.

• Rather, the facts in each case must be evaluated to determine whether or not the multiple inclusion of one or more elements in a claim renders that claim indefinite.
• The mere fact that a compound may be embraced by more than one member of a Markush group recited in the claim does not necessarily render the scope of the claim unclear.
• For example, the Markush group, “selected from the group consisting of amino, halogen, nitro, chloro and alkyl” should be acceptable even though “halogen” is generic to “chloro.”

II.   “OPTIONALLY”

Another alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term “optionally.”

• In Ex parteCordova, the language “containing A, B, and optionally C” was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.
• In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.

An alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term “optionally.”

MPEP SECTION SUMMARY The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation.

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MPEP SECTION SUMMARY A claim should not be rejected on the ground of old combination.

MPEP SECTION SUMMARY A claim should not be rejected on the ground of aggregation.

MPEP SECTION SUMMARY Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.

MPEP SECTION SUMMARY Where, in view of the nature and scope of applicant’s invention, applicant presents an unreasonable number of claims which are repetitious and multiplied, the net result of which is to confuse rather than to clarify, a rejection on undue multiplicity based on 35 U.S.C. 112, second paragraph, may be appropriate.

MPEP SECTION SUMMARY There is no per se rule that “double inclusion” is improper in a claim.

MPEP SECTION SUMMARY There are many situations where claims are permissively drafted to include a reference to more than one statutory class of invention.

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I.   PRODUCT-BY-PROCESS

A product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made, is proper.

• An applicant may present claims of varying scope even if it is necessary to describe the claimed product in product-by-process terms.

II.   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 under 35 U.S.C. 112, second paragraph.

MPEP SECTION SUMMARY Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112, second paragraph. This section discusses 'use' claims.

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For example, a claim which read: “A process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon.” was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced.

The most appropriate course of action would be to reject a “use” claim under alternative grounds based on 35 U.S.C. 101 and 112.

MPEP SECTION SUMMARY Some applications are filed with an omnibus claim which reads as follows: A device substantially as shown and described. This claim should be rejected under 35 U.S.C. 112, second paragraph, because it is indefinite in that it fails to point out what is included or excluded by the claim language.

MPEP SECTION SUMMARY Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims.

MPEP SECTION SUMMARY Claims to chemical compounds and compositions containing chemical compounds often use formulas that depict the chemical structure of the compound. This section covers claims involving chemical formulas.

These structures should not be considered indefinite nor speculative in the absence of evidence that the assigned formula is in error.

The absence of corroborating spectroscopic or other data cannot be the basis for finding the structure indefinite.

A claim to a chemical compound is not indefinite merely because a structure is not presented or because a partial structure is presented.

MPEP SECTION SUMMARY The presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. 112, second paragraph, but the claim should be carefully analyzed to determine how the mark or name is used in the claim. This section discusses using trademarks or trade names in a claim.

It is important to recognize that a trademark or trade name is used to identify a source of goods, and not the goods themselves.

Thus a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.

If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112, second paragraph.

If a trademark or trade name appears in a claim and is not intended as a limitation in the claim, the question of why it is in the claim should be addressed.

• Does its presence in the claim cause confusion as to the scope of the claim?
• If so, the claim should be rejected under 35 U.S.C. 112, second paragraph.
  
  

MPEP SECTION SUMMARY Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35 U.S.C. 112, second paragraph, solely on the ground that they define the inherent function of a disclosed machine or apparatus.

 

» 2174 Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA 35 U.S.C. 112, First and Second Paragraphs