Search the Archives           Subscribe           About this News Service           Reader Comments


Archived updates for Friday, August 10, 2007

USPTO Proposes New Rules for Alternative Claim Language

As part of its ongoing efforts to enhance patent quality and reduce pendency in accordance with its "21st Century Strategic Plan," the U.S Patent and Trademark Office published a Notice of Proposed Rulemaking on August 10, 2007 to revise its treatment of claims that recite alternatives, including claims use Markush groups and/or other forms of alternative language. To be ensured of consideration, written comments must be received on or before October 9, 2007. No public hearing will be held. For further official information, contact Kathleen Kahler Fonda, Legal Advisor, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272–7754; by mail addressed to: Box Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450; or by facsimile to (571) 273–7754.

Current Office policy requires examination of all species of a claim that recites a Markush group when the alternatives are sufficiently few in number or so closely related that search and examination can be made without serious burden.  Even where the search and examination of a claim that has "unity of invention" would require serious burden, the examiner must determine the patentability of the claim. In such case, however, the examiner may require applicant to elect a single species under 37 CFR 1.146 for initial search and examination to facilitate examination on the merits. If the elected species is not allowable, examination of the Markush claim will be limited to the elected species and any species not patentably distinct therefrom, and any separate claims to the elected species and any species not patentably distinct therefrom. Claims that drawn to species patentably distinct from the elected species are held withdrawn from further consideration. If the elected species is allowable, then the search and examination of the Markush claim will be extended to non-elected species to the extent necessary to determine patentability of the claim. See MPEP 803.02

According to the Notice, Markush and other alternative formats are being used to claim multiple inventions and/or to recite hundreds, if not thousands, of alternative embodiments of a single invention in one claim. Proper search of such complex claims often consume a disproportionate amount of Office resources as compared to other types of claims. The prosecution of these complex claims likewise requires separate examination and patentability determinations for each of the alternatives within the claim, e.g., if the alternatives raise separate prior art, enablement, or utility issues. Furthermore, the variety and frequency of alternatives recited in claims filed in applications pending before the Office, driven in part by trends in emerging technologies, have exacerbated problems with pendency.

Under the proposed rules, claims that recite alternatives will have to meet two new requirements:   

1. Each Claim Must BLimited to a Single Invention

In addition to proposing a requirement limiting a claim to a single invention, the Office is proposing to specify that when subject matter that reads on multiple species is defined in a single claim using alternative language, the claim is limited to a single invention when at least one of the following two conditions is met: (1) All of the species encompassed by the claim share a substantial feature essential for a common utility, or (2) all of the species are prima facie obvious over each other. The Office proposes to encourage applicants, when filing a claim that employs alternative language, to provide an explanation as to why the claim is directed to a single invention.

The Office also proposes that applicants using alternative formats in continuation-in-part applications must identify which claim or claims in the application are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application. This proposal would reduce examination complexities and identify situations wherein a prior art reference that anticipates or renders prima facie obvious at least one species within the scope of a claim would not be available as prior art against another species if that species was set forth in a separate claim.

2. New Format Requirements for a Claim With Species Presented as a Set of Alternatives

A simplified format for the presentation of such claims must be met by any claim that uses alternative language. The Office proposes to adopt language similar to that in the PCT Guidelines, specifically requiring that the number and presentation of alternatives in the claim not make the claim difficult to construe, and requiring that each alternative within a list of alternatives must be substitutable one for another. (PCT Guidelines (paragraph 5.18) specifies that a claim can contain alternatives ‘‘provided those alternatives are of a similar nature and can fairly be substituted one for another, and provided also that the number and presentation of alternatives is a single claim does not make the claim obscure or difficult to construe.’’)

In addition, to reduce the complexity of determining whether a claim is directed to a single invention, the Office proposes to specify that no alternative may itself be defined as a set of further alternatives. Finally, the Office proposes to specify that no alternative may be encompassed by any other alternative within a list of alternatives, unless there is no other practical way to define the invention. In other words, applicants should file a series of individual claims from the broadest scope that they feel they are entitled to the narrowest scope they are willing to accept. Put differently, applicant should narrow the scope of protection sought via separate claims, and not via nested sets of overlapping alternatives

T.G.I.F.,

--Bill

    (2)comment(s)     translate     More Updates     Send    

2 Comments:

Anonymous Anonymous said...

^^Thanks!!

婚前徵信婚姻感情大陸抓姦外遇抓姦法律諮詢家暴婚前徵信尋人感情挽回大陸抓姦離婚工商徵信婚前徵信外遇抓姦感情挽回尋人大陸抓姦離婚家暴工商徵信法律諮詢跟蹤工商徵信婚前徵信感情挽回外遇抓姦法律諮詢家暴尋人大陸抓姦離婚大陸抓姦外遇尋人家暴工商徵信法律諮詢家暴感情挽回大陸抓姦外遇婚前徵信離婚尋人工商徵信外遇抓姦法律諮詢家暴婚前徵信大陸抓姦尋人感情挽回外遇抓姦婚前徵信感情挽回尋人大陸抓姦工商徵信法律諮詢離婚家暴工商徵信外遇抓姦法律諮詢家暴婚前徵信尋人感情挽回大陸抓姦離婚婚前徵信工商徵信外遇抓姦尋人離婚家暴大陸抓姦感情挽回法律諮詢離婚感情挽回婚前徵信外遇抓姦家暴尋人工商徵信外遇抓姦法律諮詢家暴婚前徵信尋人感情挽回">徵大陸抓姦離婚婚前徵信工商徵信外遇抓姦尋人離婚家暴大陸抓姦感情挽回法律諮詢

April 07, 2009 1:43 AM  
Blogger LAN said...

puma mens shoes
puma shoes
puma speed
nike shoes
nike air
nike air shoes
nike air max 90
nike air max 95
nike air max tn
nike air rift
nike shox r4
nike air max 360
nike shox nz
puma cat
air max trainers
mens nike air max
sports shoes
nike air rifts
nike air rift trainer
nike air
nike shoes air max
nike shoes shox
air shoes
Lucyliu IS Lucyliu
nike shoe cart
puma future
cheap puma
nike rift
jeans shop
diesel jeans
levis jeans
nike rift shoes
cheap nike air rifts
bape shoes

January 06, 2010 10:07 PM  

Post a Comment

<< Home