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2143.03   All Claim Limitations Must Be Considered

MPEP SECTION SUMMARY

This section explains that all claim limitations must be considered, this includes indefinite limitations in addition to limitations which do not find support in the original specification.

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“All words in a claim must be considered in judging the patentability of that claim against the prior art.”

  • If an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious.

The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation.

  • It is this subject matter that must be examined.
  • The determination of whether particular language is a limitation in a claim depends on the specific facts of the case.

As a general matter, the grammar and ordinary meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope.

  • Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.
  • In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art.


I.    INDEFINITE LIMITATIONS MUST BE CONSIDERED

A claim limitation which is considered indefinite cannot be disregarded.

  • If a claim is subject to more than one interpretation, at least one of which would render the claim unpatentable over the prior art, the examiner should reject the claim as indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph and should reject the claim over the prior art based on the interpretation of the claim that renders the prior art applicable.


II.    LIMITATIONS WHICH DO NOT FIND SUPPORT IN THE ORIGINAL SPECIFICATION MUST BE CONSIDERED

When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter).

 

» 2144 Supporting a Rejection Under 35 U.S.C. 103