706.03    Rejections Not Based on Prior Art [R-08.2017]

Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.

Rejections based on nonstatutory subject matter are explained in MPEP §§ 706.03(a), 2105, and 2106 - 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 - 2107.02. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 706.03(b). Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and subject matter that is directed to a human organism is explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 706.03(k), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 706.03(o) and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 706.03(s). Disclaimer, after interference or public use proceeding, res judicata, and reissue are explained in MPEP §§ 706.03(u) to 706.03(x). Rejections based on 35 U.S.C. 112  are discussed in MPEP §§ 2161 - 2174. IF THE LANGUAGE IN THE FORM PARAGRAPHS IS INCORPORATED IN THE OFFICE ACTION TO STATE THE REJECTION, THERE WILL BE LESS CHANCE OF A MISUNDERSTANDING AS TO THE GROUNDS OF REJECTION.

706.03(a)    Rejections Under 35 U.S.C. 101 [R-08.2017]

Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits a patent to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

I.    DOUBLE PATENTING

35 U.S.C. 101  prevents two patents issuing on the same invention to the same applicant. The "same invention" means that identical subject matter is being claimed. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.

See MPEP Chapter 800 , specifically MPEP § 804 for criteria relevant to the doctrine of "double patenting."

II.    SUBJECT MATTER ELIGIBILITY

A claimed invention must be eligible for patenting. As explained in MPEP § 2106, there are two criteria for determining subject matter eligibility: (a) first, a claimed invention must fall within one of the four categories of invention recited in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter; and (b) second, a claimed invention must be directed to patent-eligible subject matter and not to a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception). The judicial exceptions are subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013)). See also Bilski v. Kappos, 561 U.S. 593, 601, 130 S. Ct. 3218, 3225, 95 USPQ2d 1001, 1005-06 (2010) (citing Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)).

See MPEP § 2106 for a discussion of subject matter eligibility in general, and the analytical framework that is to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter, MPEP § 2106.03 for a discussion of the statutory categories of invention, MPEP § 2106.04 for a discussion of the judicial exceptions, and MPEP § 2106.05 for a discussion of how to evaluate claims directed to a judicial exception for eligibility. See also MPEP § 2105 for more information about claiming living subject matter, as well as the prohibition against claiming human organisms.

Use form paragraphs 7.04.01 and 7.05.01 for rejections based on a failure to claim an invention that falls within the statutory categories of invention. Use form paragraphs 7.04.01 and 7.05.015 for rejections based on a failure to claim an invention that is directed to patent-eligible subject matter. Use form paragraph 7.04.03 for rejections based on a claim directed to or encompassing a human organism.

Eligible subject matter is further limited by the Atomic Energy Act explained in MPEP § 706.03(b), which prohibits patents granted on any invention or discovery that is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.

III.    UTILITY

A rejection on the ground of lack of utility is appropriate when (1) it is not apparent why the invention is "useful" because applicant has failed to identify any specific and substantial utility and there is no well established utility, or (2) an assertion of specific and substantial utility for the invention is not credible. Such a rejection can include the more specific grounds of inoperativeness, such as inventions involving perpetual motion. A rejection under 35 U.S.C. 101  for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy. See Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364, 1367-68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999) ("[Y]ears ago courts invalidated patents on gambling devices on the ground that they were immoral…, but that is no longer the law…Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted…we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public."). The statutory basis for this rejection is 35 U.S.C. 101. See MPEP § 2107 for guidelines governing rejections for lack of utility. See MPEP §§ 2107.01 - 2107.03 for legal precedent governing the utility requirement.

Use form paragraphs 8.30, 8.31 and 8.32 for statutory double patenting rejections. Use form paragraphs 7.04.01 and 7.05.02 through 7.05.04 to reject under 35 U.S.C. 101  for failure to satisfy the utility requirement.

IV.    IMPROPER NAMING OF INVENTOR

Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. See 35 U.S.C. 115(a). The Office presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors of the claimed invention. See MPEP § 2137.01. Where an application has an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48. In the rare situation it is clear the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, the examiner should reject the claims under 35 U.S.C. 101  and 35 U.S.C. 115  (and pre-AIA 35 U.S.C. 102(f)  for applications subject to pre-AIA 35 U.S.C. 102 ). Use Form Paragraph 7.04.02.aia to reject under 35 U.S.C. 101  and 115  for failing to set forth the correct inventorship.

¶ 7.04.101.aia    Statement of Statutory Bases, 35 U.S.C. 101 and 35 U.S.C. 115— Improper Inventorship

35 U.S.C. 101  reads as follows:

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.

35 U.S.C. 115(a)  reads as follows (in part):

An application for patent that is filed under section 111(a)  or commences the national stage under section 371  shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth the incorrect inventorship because [1].

Examiner Note:

1. If form paragraph 7.04.01 is already being used for a rejection that is not based on improper inventorship, then in lieu of this form paragraph, use form paragraph 7.04.102.aia with form paragraph 7.04.01 for a rejection based on improper inventorship.

2. In bracket 1, insert the basis for concluding that the inventorship is incorrect.

3. This form paragraph must be followed by form paragraph 7.04.02.aia.

¶ 7.04.102.aia    Statement of Statutory Basis, 35 U.S.C. 115— Improper Inventorship

35 U.S.C. 115(a)  reads as follows (in part):

An application for patent that is filed under section 111(a)  or commences the national stage under section 371  shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth the incorrect inventorship because [1].

Examiner Note:

1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 101  on another basis has been made and the statutory text thereof is already present.

2. This form paragraph must be preceded by form paragraph 7.04.01 for a rejection based on improper inventorship.

3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.

¶ 7.04.01    Statement of Statutory Basis, 35 U.S.C. 101

35 U.S.C. 101 reads as follows:

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.

Examiner Note:

This form paragraph must precede the first use of 35 U.S.C. 101  in all first actions on the merits and final rejections.  

¶ 7.04.02.aia    Rejection, 35 U.S.C. 101/115

Claim [1] rejected under 35 U.S.C. 101  and 35 U.S.C. 115  for failing to set forth the correct inventorship for the reasons stated above.

Examiner Note:

1. In bracket 1, pluralize "Claim" if necessary, insert "is" or "are" as appropriate, and insert the claim number(s) which are under rejection.

2. This rejection must be preceded by either form paragraph 7.04.101.aia or 7.04.102.aia.

¶ 7.04.03    Human Organism

Section 33(a) of the America Invents Act reads as follows

Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

Claim [1] rejected under 35 U.S.C. 101  and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101 ). [2]

Examiner Note:

1. This paragraph must be preceded by form paragraph 7.04.01 which quotes 35 U.S.C. 101.

2. In bracket 1, pluralize "Claim" if necessary, insert claim number(s), and insert "is" or "are" as appropriate.

3. In bracket 2, explain why the claim is interpreted to read on a human organism.

¶ 7.05    Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Nonstatutory, Inoperative)

Claim [1] rejected under 35 U.S.C. 101  because

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.04.01 in first actions and final rejections.

2. This form paragraph must be followed by a detailed explanation of the grounds of rejection using one or more of form paragraphs 7.05.01, 7.05.015, 7.05.02, 7.05.03, or another appropriate reason.

3. See MPEP §§ 706.03(a) and 2105 - 2107.03 for additional guidance.

¶ 7.05.01    Rejection, 35 U.S.C. 101, Nonstatutory (Not One of the Four Statutory Categories)

the claimed invention is directed to nonstatutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because [1]

Examiner Note:

1. This form paragraph should be preceded by form paragraph 7.05.

2. In bracket 1, explain why the claimed invention is not patent eligible subject matter by identifying what the claim(s) is/are directed to and explain why it does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101  (process, machine, manufacture, or composition of matter), e.g., the claim(s) is/are directed to a signal per se, mere information in the form of data, a contract between two parties, or a human being (see MPEP § 2106, subsection I).

3. For a claim that is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) and is nonstatutory, use form paragraph 7.05.015.

¶ 7.05.015    Rejection, 35 U.S.C. 101, Nonstatutory (Directed to a Judicial Exception without Significantly More)

the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) [1] is/are directed to [2]. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because [3].

Examiner Note:

1. This form paragraph should be preceded by form paragraph 7.05.

2. This form paragraph is for use with all claims, including product (machine, manufacture, and composition of matter) and process claims, and for any type of judicial exception.

3. In bracket 1, identify the claim or claims that recite the judicial exception.

4. In bracket 2, identify the exception by referring to how it is recited (set forth or described) in the claim and explain why it is considered an exception. For example, "the Arrhenius equation, which is a law of nature in the form of a mathematical algorithm" or "the series of steps instructing how to hedge risk, which is a fundamental economic practice and thus an abstract idea." For products of nature, explain how the characteristics are not markedly different from the product’s naturally occurring counterpart in its natural state. For example, "the naturally occurring DNA segment, which is not markedly different from its naturally occurring counterpart because it conveys the same genetic information." Provide additional explanation regarding the exception and how it has been identified when appropriate.

5. In bracket 3, identify the additional elements and explain why, when considered separately and in combination, they do not add significantly more to the exception. For example, if the claim is directed to an abstract idea with additional generic computer elements explain that the generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation, or if the claim is directed to a method of using a naturally occurring correlation explain that steps for routine data gathering in order to test for the correlation do not add a meaningful limitation to the method as they would be routinely used by those of ordinary skill in the art in order to apply the correlation.

¶ 7.05.02    Rejection, 35 U.S.C. 101, Utility Lacking

the claimed invention lacks patentable utility. [1]

Examiner Note:

In bracket 1, provide explanation of lack of utility. See MPEP §§ 706.03(a) and 2105 - 2107.03.

¶ 7.05.03    Rejection, 35 U.S.C. 101, Inoperative

the disclosed invention is inoperative and therefore lacks utility. [1]

Examiner Note:

In bracket 1, explain why invention is inoperative.

¶ 7.05.04    Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), First Paragraph

Claim [1] rejected under 35 U.S.C. 101  because the claimed invention is not supported by either a [2] asserted utility or a well established utility.

[3]

Claim [4] also rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.

Examiner Note:

1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, enablement should be made using the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP §§ 2164 - 2164.08(c).

2. Use Format A, B, or C below as appropriate.

    Format A:
  • (a) Insert the same claim numbers in brackets 1 and 4.
  • (b) Insert --specific and substantial-- in inserts 2 and 5.
  • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility or a well established utility.
  • (d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific and substantial.

    Format B:
  • (a) Insert the same claim numbers in brackets 1 and 4.
  • (b) Insert --credible-- in inserts 2 and 5.
  • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.

    Format C:
  • For claims that have multiple utilities, some of which are not specific and substantial, some of which are not credible, but none of which are specific, substantial and credible:
    • (a) Insert the same claim numbers in brackets 1 and 4.
    • (b) Insert --specific and substantial asserted utility, a credible-- in inserts 2 and 5.
    • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.

706.03(b)    Barred by Atomic Energy Act [R-08.2012]

A limitation on what can be patented is imposed by the Atomic Energy Act of 1954. Section 151(a) (42 U.S.C. 2181(a)) thereof reads in part as follows:

No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.

The terms "atomic energy" and "special nuclear material" are defined in Section 11 of the Act (42 U.S.C. 2014).

Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories of pending applications relating to atomic energy that must be brought to the attention of the Department of Energy. Under 37 CFR 1.14(d), applications for patents which disclose or which appear to disclose, or which purport to disclose, inventions or discoveries relating to atomic energy are reported to the Department of Energy and the Department will be given access to such applications, but such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or an invention or discovery or that such application in fact discloses subject matter in categories specified by the Atomic Energy Act.

All applications received in the U.S. Patent and Trademark Office are screened by Technology Center (TC) work group 3640 personnel, under 37 CFR 1.14(d), in order for the Director to fulfill his or her responsibilities under section 151(d) (42 U.S.C. 2181(d)) of the Atomic Energy Act. Papers subsequently added must be inspected promptly by the examiner when received to determine whether the application has been amended to relate to atomic energy and those so related must be promptly forwarded to Licensing and Review in TC work group 3640.

All rejections based upon sections 151(a)(42 U.S.C. 2181(a)), 152 (42 U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be made only by TC work group 3640 personnel.

706.03(c)    Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-07.2015]

Rejections based on 35 U.S.C. 112(a)  or the first paragraph of pre-AIA 35 U.S.C. 112 are discussed in MPEP §§ 2161 - 2165.04. For a discussion of the utility requirements of 35 U.S.C. 112(a)  or the first paragraph of pre-AIA 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101, see MPEP §§ 2107 - 2107.03. The appropriate form paragraphs 7.30.01 and 7.31.01 through 7.33.01 should be used in making rejections under 35 U.S.C. 112(a)  or the first paragraph of pre-AIA 35 U.S.C. 112.

¶ 7.30.01    Statement of Statutory Basis, 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112

The following is a quotation of 35 U.S.C. 112(a):

(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.

2. Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

¶ 7.31.01    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Description Requirement, Including New Matter Situations

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, identify (by suitable reference to page and line numbers and/or drawing figures) the subject matter not properly described in the application as filed, and provide an explanation of your position. The explanation should include any questions the examiner asked which were not satisfactorily resolved and consequently raise doubt as to possession of the claimed invention at the time of filing.

Form paragraph 7.31.02 should be used when it is the examiner’s position that nothing within the scope of the claims is enabled. In such a rejection, the examiner should explain all the reasons why nothing within the scope of the claim is enabled. To make sure all relevant issues are raised, this should include any issues regarding the breadth of the claims relative to the guidance in the disclosure.

¶ 7.31.02    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Enablement

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. If the problem is one of scope, form paragraph 7.31.03 should be used.

3. In bracket 2, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) and 2164.04. The explanation should include any questions the examiner may have asked which were not satisfactorily resolved and consequently raise doubt as to enablement.

4. Where an essential component or step of the invention is not recited in the claims, use form paragraph 7.33.01.

Form paragraph 7.31.03 should be used when it is the examiner’s position that something within the scope of the claims is enabled but the claims are not limited to that scope.

¶ 7.31.03    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Scope of Enablement

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, because the specification, while being enabling for [2], does not reasonably provide enablement for [3]. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [4] the invention commensurate in scope with these claims. [5]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. This form paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure.

3. In bracket 2, identify the claimed subject matter for which the specification is enabling. This may be by reference to specific portions of the specification.

4. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling.

5. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: --make--, --use--, or --make and use--.

6. In bracket 5, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) and 2164.04. The explanation should include any questions posed by the examiner which were not satisfactorily resolved and consequently raise doubt as to enablement.

¶ 7.31.04    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for pre-AIA the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon [2].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, insert the basis for holding that the best mode has been concealed, e.g., the quality of applicant’s disclosure is so poor as to effectively result in concealment.

3. Use of this form paragraph should be rare. See MPEP §§ 2165- 2165.04.

Form paragraph 7.33.01 should be used when it is the examiner’s position that a feature considered critical or essential by applicant to the practice of the claimed invention is missing from the claim.

¶ 7.33.01    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Essential Subject Matter Missing From Claims (Enablement)

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without [2], which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, recite the subject matter omitted from the claims.

3. In bracket 3, give the rationale for considering the omitted subject matter critical or essential.

4. The examiner shall cite the statement, argument, date, drawing, or other evidence which demonstrates that a particular feature was considered essential by the applicant, is not reflected in the claims which are rejected.

706.03(d)    Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph [R-08.2017]

Rejections under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, are discussed in MPEP §§ 2171 - 2174 and 2181, subsection II. Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.19, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

¶ 7.30.02    Statement of Statutory Basis, 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, Second Paragraph

The following is a quotation of 35 U.S.C. 112(b):

(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.

The following is a quotation of pre-AIA 35 U.S.C. 112, 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.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.

2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

¶ 7.34    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Inventor’s Invention

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, the inventor or a joint inventor, or for pre-AIA the applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This paragraph is to be used only where inventor or applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s).

3. In bracket 3, identify the submission by inventor or applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.

4. In bracket 4, set forth what inventor or applicant has stated in the submission to indicate a different invention.

5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.

¶ 7.34.01    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite)

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.11, as applicable. If none of these form paragraphs are appropriate, a full explanation of the deficiency of the claims should be supplied. Whenever possible, identify the particular term(s) or limitation(s) which render the claim(s) indefinite and state why such term or limitation renders the claim indefinite. If the scope of the claimed subject matter can be determined by one having ordinary skill in the art, a rejection using this form paragraph would not be appropriate. See MPEP §§ 2171 - 2174 for guidance. See also form paragraph 7.34.15 for pro se applicants.

¶ 7.34.02    Terminology Used Inconsistent with Accepted Meaning

Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term "[1]" in claim [2] is used by the claim to mean "[3]," while the accepted meaning is "[4]." The term is indefinite because the specification does not clearly redefine the term.

Examiner Note:

1. In bracket 3, point out the meaning that is assigned to the term by applicant’s claims, taking into account the entire disclosure.

2. In bracket 4, point out the accepted meaning of the term. Support for the examiner’s stated accepted meaning should be provided through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP § 2173.05(a).

3. This paragraph must be preceded by form paragraph 7.34.01.

4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.

¶ 7.34.03    Relative Term - Term of Degree Rendering Claim Indefinite

The term "[1]" in claim [2] is a relative term which renders the claim indefinite. The term "[1]" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [3]

Examiner Note:

1. In bracket 3, explain which parameter, quantity, or other limitation in the claim has been rendered indefinite by the use of the term appearing in bracket 1.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.04    Broader Range/Limitation And Narrow Range/Limitation in Same Claim

A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim [1] recites the broad recitation [2], and the claim also recites [3] which is the narrower statement of the range/limitation.

Examiner Note:

1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.05    Lack of Antecedent Basis in the Claims

Claim [1] recites the limitation [2] in [3]. There is insufficient antecedent basis for this limitation in the claim.

Examiner Note:

1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--.

2. In bracket 3, identify where in the claim(s) the limitation appears, for example, --line 3--, --the 3rd paragraph of the claim--, --the last 2 lines of the claim--, etc.

3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the claim indeterminate. It must be preceded by form paragraph 7.34.01.

¶ 7.34.07    Claims Are a Literal Translation

The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.08    Indefinite Claim Language: "For Example"

Regarding claim [1], the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.09    Indefinite Claim Language: "Or The Like"

Regarding claim [1], the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.10    Indefinite Claim Language: "Such As"

Regarding claim [1], the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.11    Modifier of "Means" Lacks Function

Claim [1] uses the word "means" or a generic placeholder as a substitute for "means" and is preceded by the word(s) "[2]." It is unclear whether these words convey function or structure. A limitation construed under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph must not recite the structure for performing the function. Since no clear function is specified by the word(s) preceding "means," it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).

Examiner Note:

1. This paragraph should be used when words precede the term "means" or a substitute for "means" and it cannot be determined from the specification whether those words connote function or structure. Therefore, it is unclear whether the presumption is rebutted that 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph is being invoked. If the claim element recites structure for performing the function, 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph will not be invoked. It is necessary for the words which precede "means" to convey a function to be performed and not recite structure to invoke 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.12    Essential Steps Omitted

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the steps omitted from the claims.

3. Give the rationale for considering the omitted steps critical or essential.

¶ 7.34.13    Essential Elements Omitted

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the elements omitted from the claims.

3. Give the rationale for considering the omitted elements critical or essential.

¶ 7.34.14    Essential Cooperative Relationships Omitted

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims.

3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential.

¶ 7.34.15    Rejection Under 35 U.S.C. 112, Pro Se

Claim [1] rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.

¶ 7.34.16     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

The claim limitation " [1] " uses the phrase "means for" or "step for" or a generic placeholder coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].

If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase "means for" or "step for" or the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.

If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph

Examiner Note:

1.       In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

2.       In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.)

3.        This form paragraph may be used when the phrase "means for" or "step for" is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.

4.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.17     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Applicant Asserts that Claim Limitation Is Invoking 35 U.S.C. 112(f) or pre-AIA 35 US.C. 112, Sixth Paragraph, but the Phrase "Means for" or "Step for" Is Not Used

Applicant asserts that the claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, because [2].  If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:

(a)        Amend the claim to include the phrase "means for" or "step for". The phrase "means for" or "step for" must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or

(b)        Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

1.        This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, even though the phrase "means for" or "step for" is not used in the claim limitation. See MPEP § 707.07(a) for guidance on when the second action may be made final.

2.        In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

3.        In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.

4.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.18     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]

Applicant may:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b)        Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a) ).

If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:

(a)        Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or

(b)        Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d)  and MPEP §§ 608.01(o) and 2181.

Examiner Note:

1.  In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.

2.  In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.

3.  This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.19     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Fails To Clearly Link or Associate the Disclosed Structure, Material, or Acts to the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. [2]

Applicant may:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b)        Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or

(c)        State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.175(d)  and MPEP §§ 608.01(o) and 2181 .

Examiner Note:

1.  In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

2.  In bracket 2, explain why the written description of the specification fails to clearly link or associate the structure, material, or acts to the claimed function.

3.  This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.35    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim - Omnibus Claim

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. Use this paragraph to reject an "omnibus" type claim. No further explanation is necessary.

3. See MPEP § 1302.04(b) for cancellation of such a claim by examiner’s amendment upon allowance.

4. An example of an omnibus claim is: "A device substantially as shown and described."

¶ 7.35.01    Trademark or Trade Name as a Limitation in the Claim

Claim [1] contains the trademark/trade name [2]. Where a 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 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. 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. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.

Examiner Note:

1. In bracket 2, insert the trademark/trade name and where it is used in the claim.

2. In bracket 3, specify the material or product which is identified or described in the claim by the trademark/trade name.

706.03(e)    Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph [R-07.2015]

Form paragraphs 7.30.03.h, 7.30.03, 7.30.04, and 7.34.20 - 7.34.22 should be used when a claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP § 2181. For rejections under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph relating to 35 U.S.C. 112(f)  or 35 U.S.C. 112, sixth paragraph, use form paragraphs 7.34.16 to 7.34.19, reproduced in MPEP § 706.03(d).

¶ 7.30.03.h    Header for Claim Interpretation

CLAIM INTERPRETATION

Examiner Note:

This form paragraph may precede form paragraph 7.30.03.

¶ 7.30.03    Statement of Statutory Basis, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph

The following is a quotation of 35 U.S.C. 112(f):

  • (f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.

2. Use this paragraph ONLY ONCE in a given Office action when claim elements use "means" (or "step for") or otherwise invoke treatment under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

3. This form paragraph must be followed with form paragraph 7.30.04.

¶ 7.30.04    Use of "Means" (or "Step for") in Claim Drafting and Rebuttable Presumptions Raised

Use of the word "means" (or "step for") in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f)  (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f)  (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.

Absence of the word "means" (or "step for") in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f)  (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f)  (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.

Claim elements in this application that use the word "means" (or "step for") are presumed to invoke 35 U.S.C. 112(f)  except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word "means" (or "step for") are presumed not to invoke 35 U.S.C. 112(f)  except as otherwise indicated in an Office action.

Examiner Note:

1. Use this paragraph ONLY ONCE in a given Office action when claim elements use "means" (or "step for") or otherwise invoke treatment under 35 U.S.C. 112(f)  (pre-AIA 35 U.S.C. 112, sixth paragraph) by using a substitute term for "means" that serves as a generic placeholder.

2. This paragraph must be preceded with form paragraph 7.30.03 unless already cited in a previous Office action.

3. An explanation should be provided when the presumptions raised are rebutted by the claim language, for example by using "means" in a claim element along with definite structure that performs the function or by not using "means" and failing to recite structure that performs the function.

4. This paragraph may be followed by form paragraphs 7.34.11, 7.34.16, 7.34.18, 7.34.19, 7.34.20, 7.34.21, as appropriate.

¶ 7.34.20     The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.

Pursuant to 37 CFR 1.75(d)  and MPEP §§ 608.01(o) and 2181, applicant should:

(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or

(c) State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.

Examiner Note:

In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

¶ 7.34.21    Claim Limitation Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim limitation(s) "[1]" has/have been interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder "[2]" coupled with functional language "[3]" without reciting sufficient structure to achieve the function.  Furthermore, the generic placeholder is not preceded by a structural modifier.  [4].

Since the claim limitation(s) invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) [5] has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.  

A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: [6].  

If applicant wishes to provide further explanation or dispute the examiner's interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.

If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).

Examiner Note:

1. Use this form paragraph ONLY when additional explanation regarding treatment under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph is necessary. For example, use this paragraph if clarification is needed when a claim element does not use the word "means" but no structure for performing the function is recited in the claim itself or when the associated structure in the specification for performing the function is needs explanation. If the claim element clearly invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph and the corresponding structure is easily identified in the specification for performing the claimed function, it is not necessary to use this form paragraph.

2. This paragraph may be used to explain more than one claim when multiple claims recite similar language or raise similar issues.

3. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

4. In bracket 2, recite the generic placeholder that is merely a substitute for the term "means."

5. In bracket 3, recite the functional language.

6. In bracket 4, provide an explanation, if appropriate, why the generic placeholder is not recognized as the name of a structure but is merely a substitute for the term "means."

7. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.

8. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters.

¶ 7.34.22    Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, Applicant Asserts that Claim Limitation Does Not Invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph, but No Structure is Recited to Perform the Claimed Function

Applicant asserts that the claim element "[1]" is a limitation that does not invoke 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, 6th paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, 6th paragraph because [2]. If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, 6th Paragraph applicant may:

  • (a) Amend the claim to add structure, material or acts that are sufficient to perform the claimed function; or
  • (b) Present a sufficient showing that the claim limitation recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation does not invoke 35 U.S.C. 112(f), even though no structure is provided in the claim limitation for performing the function. See MPEP § 706.07(a) for guidance on when the second action may be made final.

2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function.

4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

706.03(f) - 706.03(j)    [Reserved]

706.03(k)    Duplicate Claims [R-08.2017]

A dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d). See MPEP § 608.01(n), subsection II.

When two claims in an application comply with the requirements of 35 U.S.C. 112(d)  but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75  as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.

¶ 7.05.05    Duplicate Claims, Warning

Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75  as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).

Examiner Note:

1. Use this form paragraph whenever two claims are found to be substantial duplicates, but they are not allowable. This will give the applicant an opportunity to correct the problem and avoid a later objection.

2. If the claims are allowable, use form paragraph 7.05.06.

3. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d), the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01. See MPEP § 608.01(n), subsection II. It is not necessary to also warn of the prohibition against duplicate claims using this form paragraph.

¶ 7.05.06    Duplicate Claims, Objection

Claim [1] objected under 37 CFR 1.75  as being a substantial duplicate of claim [2]. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).

Examiner Note:

1. If the duplicate claims are not allowable, use form paragraph 7.05.05.

2. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d), the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01. See MPEP § 608.01(n), subsection II. It is not necessary to also object to the improper dependent claim using this form paragraph.

See MPEP § 804 for double patenting rejections of inventions not patentable over each other.

706.03(l)    [Reserved]

706.03(m)    Nonelected Inventions [R-08.2012]

See MPEP § 821 to § 821.03 for treatment of claims held to be drawn to nonelected inventions.

706.03(n)    [Reserved]

706.03(o)    New Matter [R-08.2012]

35 U.S.C. 132   Notice of rejection; reexamination.

  • (a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

*****

In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). See MPEP § 2163.06 - § 2163.07(b) for a discussion of the relationship of new matter to 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph. New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP § 608.04 to § 608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter.

In the examination of an application following amendment thereof, the examiner must be on the alert to detect new matter. 35 U.S.C. 132(a)  should be employed as a basis for objection to amendments to the abstract, specification, or drawings attempting to add new disclosure to that originally disclosed on filing.

If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP § 608.01(l).

If new matter is added to the specification, it should be objected to by using Form Paragraph 7.28.

¶ 7.28    Objection to New Matter Added to Specification

The amendment filed [1] is objected to under 35 U.S.C. 132 (a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a)  states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2].

Applicant is required to cancel the new matter in the reply to this Office action.

Examiner Note:

1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead.

2. In bracket 2, identify the new matter by page and the line numbers and/or drawing figures and provide an appropriate explanation of your position. This explanation should address any statement by applicant to support the position that the subject matter is described in the specification as filed. It should further include any unresolved questions which raise a doubt as to the possession of the claimed invention at the time of filing.

3. If new matter is added to the claims, or affects the claims, a rejection under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, using form paragraph 7.31.01 should also be made. If new matter is added only to a claim, an objection using this paragraph should not be made, but the claim should be rejected using form paragraph 7.31.01. As to any other appropriate prior art or 35 U.S.C. 112  rejection, the new matter must be considered as part of the claimed subject matter and cannot be ignored.

706.03(p) - 706.03(r)    [Reserved]

706.03(s)    Foreign Filing Without License [R-11.2013]

35 U.S.C. 182   Abandonment of invention for unauthorized disclosure.

The invention disclosed in an application for patent subject to an order made pursuant to section 181  may be held abandoned upon its being established by the Commissioner of Patents that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent of the Commissioner of Patents. The abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents shall not be given without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States based upon such invention.

35 U.S.C. 184   Filing of application in foreign country.

  • (a) FILING IN FOREIGN COUNTRY.—Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181  without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181.
  • (b) APPLICATION.—The term "application" when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
  • (c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181  and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181  and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.

35 U.S.C. 185   Patent barred for filing without license.

Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.

If, upon examining an application, the examiner learns of the existence of a corresponding foreign application which appears to have been filed before the United States application had been on file for 6 months, and if the invention apparently was made in this country, he or she shall refer the application to Licensing and Review Section of Technology Center (TC) working group 3640, calling attention to the foreign application. Pending investigation of the possible violation, the application may be returned to the TC for prosecution on the merits. When it is otherwise in condition for allowance, the application will be again submitted to Licensing and Review Section of TC work group 3640 unless the latter has already reported that the foreign filing involves no bar to the United States application.

If it should be necessary to take action under 35 U.S.C. 185, Licensing and Review Section of TC work group 3640 will request transfer of the application to it.

706.03(t)    [Reserved]

706.03(u)    Disclaimer [R-07.2015]

Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant’s failure to:

  • (A) make claims suggested for interference with another application under 37 CFR 41.202(c)  (See MPEP Chapter 2300 ),
  • (B) copy a claim from a patent when suggested by the examiner (MPEP Chapter 2300 ), or
  • (C) respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent (see MPEP Chapter 2300).

The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.

Rejections based on disclaimer should be made by using one of Form Paragraphs 7.48.aia, 7.48.fti and 7.49.

¶ 7.48.aia    Failure To Present Claims for Interference

Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].

Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).

Examiner Note:

1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103  as amended by the Leahy-Smith America Invents Act, and the application also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i)  that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c)  to any patent or application that contains or contained at any time such a claim.

2. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.

3. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.

4. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 102(g) /103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.

5. This form paragraph must be preceded by form paragraph 7.14.aia, or by form paragraph 7.103.

¶ 7.48.fti    Failure To Present Claims for Interference

Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].

Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).

Examiner Note:

1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.

2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.

3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.

¶ 7.49    Rejection, Disclaimer, Failure To Appeal

An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 90.3. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2).

706.03(v)    After Interference or Former Public Use Proceeding [R-11.2013]

For rejections following an interference, see MPEP Chapter 2300.

The outcome of public use proceedings may also be the basis of a rejection. See 37 CFR 1.292 in effect on September 15, 2012, and In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). Public use proceedings, effective September 16, 2012, are no longer authorized. For certain patents, prior public use may be raised in a post-grant review proceeding. See 35 U.S.C. 321 -329. Information on prior public use may continue to be submitted by third parties via a protest in a pending application when the requirements of 37 CFR 1.291  have been met, and utilization of 37 CFR 1.291  will promote Office efficiency with respect to treatment of these issues. See MPEP § 1901.02.

706.03(w)    Res Judicata [R-11.2013]

Res judicata may constitute a proper ground for rejection. However, res judicata rejections should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision.

The timely filing of a second application copending with an earlier application does not preclude the use of res judicata as a ground of rejection for the second application claims. A patent owner or applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial. Similarly, a patent owner is precluded from seeking an amendment of a specification or drawing that was denied entry during a trial if the application or patent for which the amendment is sought has the same written description as the patent or application that was the subject of the administrative trial. See 37 CFR 42.73(d)(3).

When making a rejection on res judicata, action should ordinarily be made also on the basis of prior art, especially in continuing applications. In most situations the same prior art which was relied upon in the earlier decision would again be applicable.

In the following cases a rejection of a claim on the ground of res judicata was sustained where it was based on a prior adjudication, against the inventor on the same claim, a patentably nondistinct claim, or a claim involving the same issue.

In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir. 1994).

Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307 (D.C. Cir. 1947).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963).

In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by District Court).

In the following cases for various reasons, res judicata rejections were reversed.

In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 1963) (differences in claims).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963) (differences in claim).

In re Hellbaum, 371 F.2d 1022, 152 USPQ 571 (CCPA 1967) (differences in claims).

In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) (same claims, new evidence, prior decision by CCPA).

In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 1967) (prior decision by Board of Appeals, final rejection on prior art withdrawn by examiner "to simplify the issue," differences in claims; holding of waiver based on language in MPEP at the time).

In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969) (Board of Appeals held second set of claims patentable over prior art).

In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) (difference in claims).

In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) (new evidence, rejection on prior art reversed by court).

In re Ackermann, 444 F.2d 1172, 170 USPQ 340 (CCPA 1971) (prior decision by Board of Appeals, new evidence, rejection on prior art reversed by court).

Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 837, 179 USPQ 262 (D.C. Cir. 1973) (follows In re Kaghan).

706.03(x)    Reissue [R-11.2013]

The examination of reissue applications is covered in MPEP Chapter 1400.

35 U.S.C. 251  forbids the granting of a reissue "enlarging the scope of the claims of the original patent" unless the reissue is applied for within 2 years from the grant of the original patent (or the reissue application properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant). This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent. Such claims may be rejected as being barred by 35 U.S.C. 251.

For a reissue application filed prior to September 16, 2012, 35 U.S.C. 251  permits the filing of a reissue application by the assignee of the entire interest only in cases where it does not "enlarge the scope of the claims of the original patent." For reissue applications filed on or after September 16, 2012, the assignee of the entire interest may file the reissue application if (1) the application does not seek to enlarge the scope of the claims of the original patent, or (2) the application for the original patent was filed under 37 CFR 1.46  by the assignee of the entire interest. Such claims which do enlarge the scope may also be rejected as barred by the statute. In In re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985), however, the court permitted the erroneous filing by the assignee in such a case to be corrected.

A defective reissue oath affords a ground for rejecting all the claims in the reissue application. See MPEP § 1444.

Note that a reissue application is "special" and remains so even if applicant does not make a prompt reply. See MPEP § 1442.

706.03(y)    Improper Markush Grouping [R-08.2017]

I.    MARKUSH CLAIM

A "Markush" claim recites a list of alternatively useable members. In re Harnisch, 631 F.2d 716, 719-20, 206 USPQ 300, 303 (CCPA 1980); Ex parte Markush, 1925 Dec. Comm'r Pat. 126, 127 (1924). The listing of specified alternatives within a Markush claim is referred to as a Markush group or a Markush grouping. Abbott Labs v. Baxter Pharmaceutical Products, Inc., 334 F.3d 1274, 1280-81 (Fed. Cir. 2003)(citing to several sources that describe Markush groups).

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, or C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (Feb. 9, 2011). Although the term "Markush claim" is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim.

See MPEP § 2117 for a general discussion of Markush claims, MPEP §§ 2111.03 and 2173.05(h) for discussions of Markush claims in the context of compliance with the definiteness requirement of 35 U.S.C. 112(b), and MPEP § 803.02 for a discussion of election requirements in Markush claims.

II.    DETERMINE WHETHER MARKUSH GROUPING IS PROPER

A Markush claim may be rejected under judicially approved "improper Markush grouping" principles when the claim contains an improper grouping of alternatively useable members. A Markush claim contains an "improper Markush grouping" if either: (1) the members of the Markush group do not share a "single structural similarity" or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).

Where a Markush grouping describes part of a combination or process, the members following "selected from the group consisting of" (or a similar introductory phrase) must be substitutable, one for the other, with the expectation that the same intended result would be achieved. Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357 (Fed. Cir. 2016)("It is generally understood that … the members of the Markush group … are alternatively usable for the purposes of the invention … .")(citations omitted). Where a Markush grouping describes part of a chemical compound, regardless of whether the claim is limited to a compound per se or the compound is recited as part of a combination or process, the members following "selected from the group consisting of" (or similar introductory phrase) need not share a community of properties themselves; the propriety of the grouping is determined by a consideration of the compound as a whole. See Harnisch, 631 F.2d at 722, 206 USPQ at 305 ("in determining the propriety of a Markush grouping the compounds must be considered as wholes and not broken down into elements or other components").

The alternatives defined by the Markush group are either alternative chemical compounds as a whole (e.g., if a claim includes a compound R-OH wherein R is selected from the group consisting of methyl, propyl, or butyl, then the alternatives are methanol, propanol, or butanol) or in the context of a combination or process, the alternatives from which a selection is to be made (e.g., the alternatives in a list following the phrase "selected from the group consisting of"). The alternatives (1) share a "single structural similarity" when they belong to the same recognized physical or chemical class or to the same art-recognized class, and (2) share a common function or use when they are disclosed in the specification or known in the art to be functionally equivalent in the context of the claimed invention. See Supplementary Guidelines at 7166 and subsection II.A, below.

Where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the compounds do not appear to be members of a recognized physical or chemical class or members of an art-recognized class, the members are considered to share a "single structural similarity" and common use when the alternatively usable compounds share a substantial structural feature that is essential to a common use. Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). See also subsection II.B, below.

A.    "Single Structural Similarity" - Members of a Physical, Chemical, or Art-Recognized Class; Common Use Includes Functional Equivalence

Members of a Markush group share a "single structural similarity" when they belong to the same recognized physical or chemical class or to the same art-recognized class (prong 1) and the members of a Markush group share a common function or use when they are disclosed in the specification or known in the art to be functionally equivalent (prong 2).

A recognized physical class, a recognized chemical class, or an art-recognized class is a class wherein there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved. For example, in the context of a claim covering a disposable diaper, a limitation "the fastener selected from the group consisting of a pressure sensitive adhesive and complimentary release material, a complimentary hook and loop structure, a snap, and a buckle" would likely be considered an art recognized class because a review of the prior art would establish that it was well known that each member could be substituted for each other with the expectation that the intended result would occur.

Note that where a Markush group includes only materials from a recognized scientific class of equivalent materials or from an art-recognized class, "the mere existence of such a group in an application tend[s] to prove the equivalence of its members and when one of them [is] anticipated the group [is] therefore rendered unpatentable, in the absence of some convincing evidence of some degree of non-equivalency of one or more of the remaining members." In re Ruff, 256 F.2d 590, 598-99, 118 USPQ 340, 348 (CCPA 1958)("[A]ctual equivalence is not enough to justify refusal of a patent on one member of a group when another member is in the prior art. The equivalence must be disclosed in the prior art or be obvious within the terms of Section 103." Id. at 599, 118 USPQ at 348).

Thus, a Markush grouping is ordinarily proper if all the members of the group belong to a recognized class (whether physical, chemical, or art recognized) and are disclosed in the specification to possess at least one property in common which is mainly responsible for their function in the claimed invention, and it is clear from their very nature or from the prior art that all members possess this property. See also MPEP § 803.02.

B.    "Single Structural Similarity" - Substantial Structural Feature; Common Use Flows From Substantial Structural Feature

Where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as explained in subsection II.A, above, the members of the Markush grouping may be considered to share a "single structural similarity" and common use where the alternatives share a substantial structural feature that is essential to a common use.

For example, in Harnisch, the claims were directed to a Markush group of coumarin derivatives disclosed to be useful as dyes. The claimed coumarin derivatives were not members of a recognized chemical class, encompassing "polyfused N-heterocyclics, cyclic, acyclic and aromatic amines, aryloxyalkylamines, amides, sulfonamides, [and] phthalimides" among others. Harnisch, 631 F.2d at 718, 206 USPQ at 302. Furthermore, they were not members of an art-recognized class ("[n]owhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent" (Id.)). However, the court found that the Markush grouping was proper because the claimed compounds, viewed as a whole, all share a coumarin group and the property of being a dye. See also In re Jones, 162 F.2d 479, 151 (1947).

Therefore, the phrase "single structural similarity" as used in the Supplementary Guidelines includes a substantial structural feature (prong 1), and in order for a Markush grouping based on a substantial structural feature to be proper, the common use must flow from the substantial structural feature (prong 2). See Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984)). See subsection IV, below, for a discussion of the Harnisch and Hozumi decisions.

III.    REJECTION BASED ON IMPROPER MARKUSH GROUPING

When an examiner determines that the members of a Markush group lack either a single structural similarity or a common use, or if the single structural similarity is a substantial structural feature of a chemical compound that is not essential to the common use, then a rejection on the basis that the claim contains an "improper Markush grouping" is appropriate (see subsection II). Note that this is a rejection on the merits and may be appealed to the Patent Trial and Appeal Board in accordance with 35 U.S.C. 134 and 37 CFR 41.31(a)(1). Use Form Paragraph 8.40 to reject a claim on the basis that it includes an improper Markush grouping.

¶ 8.40    Improper Markush Grouping Rejection

Claim [1] rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a "single structural similarity" and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a "single structural similarity" and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 706.03(y).

The Markush grouping of [2] is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: [3].

To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.

Examiner Note:

1. In bracket 1, insert claim number(s) and "is" or "are" as appropriate.

2. In bracket 2, insert a description of the Markush group(s) that are improper.

3. In bracket 3, explain why these alternatives do not meet the requirements for a proper Markush grouping, i.e., why the alternatives are not all members of the same recognized physical or chemical class or the same art-recognized class; and/or why the members are not considered to be functionally equivalent and have a common use; and/or why (if the Markush grouping describes alternative chemical compounds), the alternatives do not share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 706.03(y).

4. If an election of species requirement is appropriate, this form paragraph should only be used after applicant has made an election.

In accordance with the principles of compact prosecution, a rejection based on an improper Markush grouping should be made in the first action on the merits after presentation of the claim with the improper Markush grouping (e.g., first Office action on the merits or next Office action following presentation of the claim). In addition, if the examiner determines that one or more claims include an improper Markush grouping, the examiner should also require the applicant to elect an alternative or group of indistinct alternatives for search and examination (i.e., an election of species), if such an election requirement was not previously made. See MPEP § 803.02 for more information on election of species requirements in Markush claims. Note that if a written provisional election of species requirement must be made separate from the first Office action on the merits, it should not include a rejection on the basis of an improper Markush grouping. Any appropriate improper Markush grouping rejection should be made in an Office action on the merits.

The examiner should include suggestions for the applicant as to how to overcome the rejection, e.g., by suggesting a proper Markush grouping based on the specification as filed and/or by suggesting that applicant set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims. There may be more than one way to formulate a proper Markush grouping. The examiner should not suggest any grouping that clearly would not meet the requirements of 35 U.S.C. 112(a). For example, the examiner should not suggest a grouping that meets the requirements for a proper Markush grouping, but would clearly lack adequate written description if presented in a separate claim.

In addition to a rejection based on an improper Markush grouping, the claim should also be rejected under 35 U.S.C. 112(b)  if one skilled in the art cannot determine the metes and bounds of the Markush claim due to an inability to envision all of the members of the Markush grouping. In other words, if a boundary cannot be drawn separating embodiments encompassed by the claim from those that are not, the claim is indefinite and should be rejected under 35 U.S.C. 112(b). See also MPEP § 2173.05(h).

The claim should be examined for patentability with respect to all other conditions of patentability (e.g., 35 U.S.C. 101, 102, 103, 112, and nonstatutory double patenting). As explained with regard to election of species practice as set forth in detail in MPEP § 803.02, the search need not be extended to species that fall outside a proper Markush grouping.

The improper Markush grouping rejection of the claim should be maintained until (1) the claim is amended such that the Markush grouping includes only members that share a single structural similarity and a common use; or (2) the applicant presents convincing arguments why the members of the Markush grouping share a single structural similarity and common use (i.e., are members of a physical, chemical, or art-recognized class that share a common use, or are chemical compounds that share a substantial structural feature that is essential to the common use). In addition, even if the applicant does not take action sufficient to overcome the improper Markush grouping rejection, when all of the claims are otherwise in condition for allowance the examiner should reconsider the propriety of the improper Markush grouping rejection. If the examiner determines that in light of the prior art and the record as a whole the alternatives of the Markush grouping share a single structural similarity and a common use, then the rejection should be withdrawn. Note that no Markush claim can be allowed until any improper Markush grouping rejection has been overcome or withdrawn, and all other conditions of patentability have been satisfied.

IV.    MARKUSH GROUPING EXAMPLES

The propriety of Markush groupings must be decided on a case-by-case basis. The following examples illustrate Markush groupings that have been found to be proper and improper. Office personnel should note that the cases from which these examples are drawn have been selected for their treatment of Markush groupings. The cases may not necessarily reflect current practice as to other issues discussed therein.

A.    In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)

Representative Claim:

1. Coumarin compounds which in one of their mesometric limiting structures correspond to the general formula

diagram of general formula for a mesometric limiting structure

wherein

  • X represents aldehyde, azomethine, or hydrazone,
  • R1 represents hydrogen or alkyl,
  • Z1 represents hydrogen, alkyl, cycloalkyl, aralkyl, aryl or a 2- or 3-membered alkylene radical connected to the 6-position of the coumarin ring and
  • Z2 represents hydrogen, alkyl, cycloalkyl, aralkyl or a 2- or 3-membered alkylene radical connected to the 8-position of the coumarin ring

and wherein

  • Z1 and Z2 conjointly with the N atom by which they are bonded can represent the remaining members of an optionally benz-fused heterocyclic ring which, like the ring A and the alkyl, aralkyl, cycloalkyl and aryl radicals mentioned, can carry further radicals customary in dye-stuff chemistry.

Background: The Board had entered a rejection – later reversed by the CCPA – of claim 1 under 37 CFR 1.196(b) on the ground that it was drawn to an improper Markush group. The Board had focused on the wide variety of functional groups that could be present in the claimed compounds, and had stressed the different physical and chemical properties of the compounds in view of the functional groups. The Board had observed that "[n]owhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent." In the Board’s view, "the mere fact" that all of the compounds encompassed by claim 1 shared "a single structural similarity (i.e., the coumarin group)," and as a result were useful either as dyes or intermediates for the preparation of dyes, was insufficient to render the Markush grouping proper because the compounds could "be subject to different modes of application and use."

Analysis/Conclusion: The CCPA reversed the Board’s decision and held that the Markush grouping was proper. The court pointed out that all of the claimed compounds are dyes, even if some might also be seen as synthetic intermediates. The court noted the Board’s admission, despite the significant variation in functional groups, that all of the compounds shared "a single structural similarity" which is the coumarin core. The court held that "the claimed compounds all belong to a subgenus, as defined by appellant [in the specification], which is not repugnant to scientific classification." Stating that "[u]nder these circumstances we consider the claimed compounds to be part of a single invention," the court concluded that the Markush grouping of claim 1 was proper. The CCPA also stressed that they decide cases involving the propriety of Markush groupings "on their facts on a case-by-case basis."

The Harnisch court also cited its earlier decision in In re Jones, 162 F.2d 479 (CCPA 1947) with approval as to the proper approach to evaluating claims containing Markush groups. According to the Harnisch court, "in determining the propriety of a Markush grouping the compounds must be considered as wholes and not broken down into elements or other components." In other words, when considering whether the members of a Markush group have sufficient structural similarity and common use to meet prongs 1 and 2 above, the proper focus should be on the commonality across all of the alternative embodiments of the invention within the scope of the claim. Note that in the Harnisch decision, the court looked to the common structure of the coumarin core and its associated common function as a dye, even though the coumarin core was not part of the variable Markush groups of substituents. A Markush grouping is not improper simply because the members of a list of alternative elements or substituents of the invention, as distinguished from a list of complete embodiments of the invention, lack "a single structural similarity" or a common use. When assessing whether a Markush grouping defining a chemical compound is proper, each claimed chemical compound as a whole must be compared and analyzed to determine whether the claimed compounds share both a substantial single structural similarity and a common use.

B.    Ex parte Dams, Appeal No. 1997-2193, 07/986,648, decision mailed 9-13-2000 (unpublished); USP 6,201,122

Representative Claims:

1. A fluoroaliphatic radical-containing anionic sulfonamido compound which comprises a fluoroaliphatic radical-containing sulfonamido group and an ethylenecarbonyl group whose beta ethylene carbon atom is bonded to a sulfur or nitrogen atom which is bonded to a linking group bonded to the nitrogen atom of said sulfonamido group, and the carbonyl carbon atom of said carbonyl is bonded to an anionic hydrophilic polar group comprising at least one carbon, nitrogen, oxygen, or sulfur atom.

2. The fluoroaliphatic radical-containing sulfonamido compound of claim 1 wherein said compound has the formula

  • RfSO2N(R)WACH(R')CH(R'')C(O)-Y2

where Rf is a fluoroaliphatic radical; A is S or NR'''; W is siloxylene, silylene, alkylene, arylene, or combinations thereof; R, R', R'', and R''' are independently hydrogen, lower alkyl, aryl, or combinations thereof, and can contain functional groups, or R and R''' together with the nitrogen atoms to which they are bonded and W, form a ring; and Y is an anionic hydrophilic polar group comprising at least one carbon, nitrogen, oxygen, or sulfur atom.

6. The fluoroaliphatic radical-containing sulfonamido compound of claim 2 wherein said N(R)WA is selected from the group consisting of N(R)CH2CH2NH,

graphic representation of cyclic alternative

N(R)CH2CH2CH2Si(CH3)2OSi(CH3)2CH2CH2CH2NH, N(R)CH(CH3)CH2(CH2CH2O)q(CH(CH3)CH2O)zCH2CH(CH3)NH where q and z are from 1 to 20, and N(R)CH2CH2S, where R is H, CH3 or CH2CH3.

Background: The examiner had rejected the claims on a number of grounds, including the ground of improper Markush groupings. It had been the examiner’s position that the Markush groups of the claims lacked a common structural feature. The examiner had also stated that in his view, the members of the Markush group were separately classifiable and separately patentable. This rejection was later reversed by the Board.

Analysis/Conclusion: The Board stated that the examiner erred by failing to treat the compounds of the claims as a whole. The examiner had improperly "focused on the individual moiety defined by the Markush terminology." Referring to claim 6 and relying on In re Harnisch, the Board explained that even though Markush terminology was used to define the substituent N(R)WA, the proper inquiry was "whether the compounds defined by the different moieties" have the necessary common structure and common use. The Board held that the compounds shared "a common structural feature disclosed as essential to the disclosed utility of being an anionic surfactant." Thus the compounds satisfied prongs 1 and 2 above, and the Markush grouping was proper.

C.    Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Interf. 1984) Appeal No. 559-94, Application No. 06/257,771, decision mailed 06-26-1984 (USP 4,551,532)

Representative Claim:

Claim 1. A compound of the formula:

Formula for Claim 1 of Hozumi
  • wherein
    • n is an integer of 1 to 15;
    • R1 is C6-26 alkyl, C6-26 alkenyl or C6-26 alkynyl, each of said groups being unsubstituted or substituted by hydroxyl, mercapto, amino, oxo, carbamoyl, carboxyl, halogen, C3-7 cycloalkyl or phenyl; and
    • R2 , R3 and R4 are independently hydrogen or C1-5 alkyl, or
      graphic representation of cyclic ammonio group

      represents cyclic ammonio selected from the group consisting of pyridinio, oxazolio, thiazolio, pyridazinio, quinolinio, isoquinolinio, N-C1-4 alkylmorpholinio and N-C1-4 alkylpiperazinio, each of said groups being unsubstituted or substituted by C1-4 alkyl, hydroxyl, hydroxyethyl, aminoethyl, amino, carbamoyl or ureido,

or a pharmaceutically acceptable salt thereof.

Background: The examiner had rejected claim 1 on the ground that it included an improper Markush grouping.

Analysis/Conclusion: The Board reversed the examiner’s improper Markush grouping rejection of claim 1, once again relying on the Harnisch decision. The Board summarized Harnisch by stating that the Markush grouping of coumarin compounds in that case was proper because there was "in common a functional utility related to a substantial structural feature disclosed as being essential to that utility." In this case, as in others already discussed, the Board emphasized the case-by-case nature of the inquiry.

Applying the Harnisch criteria to the facts of this case, the Board pointed out that structurally "the compounds claimed are phosphoric acid diesters in which one esterifying moiety is derived from a poly(ethylene glycol) monoether and the other is derived from a beta-aminoethanol." The Board acknowledged that as a result of the variable number of repeating oxyethylene units indicated by the "n" index, the molecular weight could "vary over a fairly broad range," and that further structural variation was seen in the etherifying groups and the substituents on the nitrogen atom. Despite the breadth of the claim, the Board focused on "the relatively large proportion of the structure of the compounds in the claimed class which is common to the entire class," and determined that the prong 1 requirement for structural similarity was met. As for the prong 2 common use requirement, the Board stated that all of the compounds shared antimycotic activity. Thus the Board found that in this case, as was also the case in Harnisch, there was "a substantial structural feature of the class of compounds claimed disclosed as being essential to at least one disclosed utility." Thus the Markush grouping was proper and the examiner’s rejection was reversed.

D.    Based On PCT Search and Examination Guidelines Example 23

Claim 1: A herbicidal composition consisting essentially of an effective amount of the mixture of (a) 2,4-D (2,4-dichloro-phenoxy acetic acid) and (b) a second herbicide selected from the group consisting of copper sulfate, sodium chlorate, ammonium sulfamate, sodium trichloroacetate, dichloropropionic acid, 3-amino-2,5-dichlorobenzoic acid, diphenamid (an amide), ioxynil (nitrile), dinoseb (phenol), trifluralin (dinitroaniline), EPTC (thiocarbamate), and simazine (triazine) along with an inert carrier or diluent.

Background/Prior Art: A review of the art demonstrates that the alternatives are not all members of the same recognized physical or chemical recognized class of compounds. The prior art explains that mixing herbicides can be risky and can result in physical or chemical incompatibilities, e.g., increasing or decreasing the effectiveness of each or all of the herbicides, increasing toxicity, or reacting to form a precipitate. The prior art also shows that the many of the herbicides set forth in component (b) are effective against one type of weed (e.g., algae, woody weeds, or grasses), but are not effective against other types of weeds. In addition, many of the herbicides listed in the Markush group are tolerated by one type of crop (e.g., legumes, tomato, or corn) or in one type of environment (e.g., ponds, golf courses, or orchards), but are not tolerated by other crops or in other environments.

Analysis: All members of the Markush grouping have a common disclosed use as herbicides. However, the alternatives set forth in the Markush grouping are not all members of the same physical or chemical recognized class of compounds. Furthermore, the members of the Markush group defining component (b) are not in an art recognized class because a person of ordinary skill in the art would not expect that members of the class will behave in the same way in the context of the claimed invention. Specifically, a person of ordinary skill in the art would not expect that any one herbicide of component (b) could be substituted with any other member of the Markush group with the expectation that the same intended result would be achieved because of the unpredictability of results when mixing herbicides, the different weeds that are controlled by one member of the Markush group as compared to another, the different crops that do (or do not) tolerate the alternatives within the Markush group, and the differrent environments in which the each second herbicide is suitable for use.

Although the members of the Markush grouping are not members of a recognized class (physical, chemical, or art-recognized) for the reasons set forth above, the Markush grouping describes alternative chemical compounds. Therefore the members of the Markush grouping may be considered to share a "single structural similarity" and common use if the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.

In this case, the members of the Markush grouping do not share a substantial structural feature. Rather, the members of the Markush group defining component (b) represent a plurality of chemical classes with varying structures which may be identified as follows:

  • (a) inorganic salts: copper sulfate, sodium chlorate, ammonium sulfamate (no ring structure)
  • (b) organic salts and carboxylic acids: sodium trichloroacetate, dichloropropionic acid, 3-amino-2,5-dichlorobenzoic acid (only the third chemical has a ring structure, which is a benzoic acid)
  • (c) amides: diphenamid (ring structure is diphenyl)
  • (d) nitriles: ioxynil (ring structure is dinitrophenol)
  • (e) phenols: dinoseb
  • (f) amines: trifluralin, (ring structure is dinitroaniline), and
  • (g) heterocyclic: simazine (ring structure is triazine).

Conclusion: The claim sets forth an improper Markush grouping because the alternatives are not all members of the same recognized physical or chemical class or the same art-recognized class, nor do the alternative chemical compounds share both a substantial structural feature and a common use that flows from the substantial structural feature.