You are here: Ed9 07.2015 Guidebook » Appendix III: 35 U.S.C. 103
2143.03 All Claim Limitations Must Be Considered
2143.03 All Claim Limitations Must Be Considered
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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.
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).
