MPEP § 2117 — MPEP § 2117
Current through: 2022-07-01

2117-Markush Claims 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2117 
 

 
 
 
 
 
 2117 Markush Claims [R-01.2024]
 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,
 302-304 (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 Markush grouping. Abbott Labs v. Baxter Pharmaceutical
 Products, Inc., 334 F.3d 1274, 1280-81, 67 USPQ2d 1191, 1196-97 (Fed. Cir.
 2003) (citing to several sources that describe Markush groups). Claim language defined
 by a Markush grouping requires selection from a closed group “consisting of” the
 alternative members. Id. at 1280, 67 USPQ2d at 1196. See also
 Amgen Inc. v. Amneal Pharmaceuticals LLC, 945 F.3d 1368, 1376-78,
 2020 USPQ2d 3197 (Fed. Cir. 2020) (stating that there is a strong presumption that a
 claim element set off with “consisting of” is closed to unrecited elements.). See
 MPEP §
 2111.03 , subsection II, for a discussion of the term
 “consisting of” in the context of Markush groupings.
 

 Treatment of claims reciting alternatives is not
 governed by the particular format used (e.g., alternatives may be set forth as “a
 material selected from the group consisting of A, B, and C” or “wherein the material is
 A, B, or C”). 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 (February 9, 2011). Claims that set forth a list of alternatives from
 which a selection is to be made are typically referred to as Markush claims, after the
 appellant in Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 127 (1924).
 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. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and
 biology are most frequently claimed under the Markush formula, but purely mechanical
 features or process steps may also be claimed by using the Markush style of claiming.
 See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288,
 1297-98, 92 USPQ2d 1163, 1170-1172 (Fed. Cir. 2009)(claim to a hemodialysis apparatus
 required “at least one unit selected from the group consisting of (i) a
 dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an
 ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit” and a user/machine
 interface operably connected thereto); In re Harnisch, 631 F.2d 716,
 206 USPQ 300 (CCPA 1980)(defining alternative moieties of a chemical compound with
 Markush groupings).
 

 A Markush grouping is proper if the members of a group
 share a single structural similarity and a common use. See subsections II - IV, below,
 for guidelines regarding the determination of whether a Markush grouping is
 improper.
 

 See MPEP § 2111.03 and
 MPEP §
 2173.05(h) for discussions of when a Markush grouping may be
 indefinite under 35 U.S.C. 112(b) (e.g., if the list
 of alternatives is not a closed grouping, or if a Markush group is so expansive that
 persons skilled in the art cannot determine the metes and bounds of the claimed
 invention). 
 

 See MPEP § 803.02 for information
 pertaining to the election, search, and examination of claims that include at least one
 Markush grouping. 
 

 II. IMPROPER MARKUSH GROUPING 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, 119 USPQ2d
 1773, 1779 (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”). See also
 In re Jones, 162 F.2d 479, 481, 74 USPQ 149, 151 (CCPA 1947) (“In
 determining the propriety of a Markush grouping, moreover, the compounds which are
 grouped must each be considered as a whole and should not be 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, and 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 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. 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 complementary release material, a complementary 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
 (repositionable and refastenable) 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. 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 still be considered to be proper 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, 481,
 74 USPQ 149, 151 (1947).
 

 See also 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 species of a
 Markush group do not share a single structural similarity or do not share a 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 §
 2117 .
 

 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 §
 2117 .
 

 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
 

 

 wherein

 
 
 X represents aldehyde, azomethine, or
 hydrazone,
 

 R 1 
 represents hydrogen or alkyl,
 

 Z 1 
 represents hydrogen, alkyl, cycloalkyl, aralkyl, aryl or a 2- or
 3-membered alkylene radical connected to the 6-position of the
 coumarin ring and
 

 Z 2 
 represents hydrogen, alkyl, cycloalkyl, aralkyl or a 2- or 3-membered
 alkylene radical connected to the 8-position of the coumarin ring
 

 
 
 and wherein

 
 
 Z 1 and
 Z 2 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, 74 USPQ 149
 (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
 

 
 
 R f SO 2 N(R)WACH(R')CH(R'')C(O)-Y
 

 
 
 where R f 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)CH 2 CH 2 NH,
 

 

 N(R)CH 2 CH 2 CH 2 Si(CH 3 ) 2 OSi(CH 3 ) 2 CH 2 CH 2 CH 2 NH,
 N(R)CH(CH 3 )CH 2 (CH 2 CH 2 O) q (CH(CH 3 )CH 2 O) z CH 2 CH(CH 3 )NH
 where q and z are from 1 to 20, and
 N(R)CH 2 CH 2 S, where R is H,
 CH 3 or
 CH 2 CH 3 .
 

 

 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:

 

 
 
 wherein
 
 n is an integer of 1 to 15;

 R 1 is
 C 6-26 alkyl,
 C 6-26 alkenyl or
 C 6-26 alkynyl, each of said groups
 being unsubstituted or substituted by hydroxyl, mercapto, amino,
 oxo, carbamoyl, carboxyl, halogen, C 3-7 
 cycloalkyl or phenyl; and 
 

 R 2 ,
 R 3 and
 R 4 are independently hydrogen or
 C 1-5 alkyl, or 
 
 

 represents cyclic ammonio
 selected from the group consisting of pyridinio, oxazolio,
 thiazolio, pyridazinio, quinolinio, isoquinolinio,
 N-C 1-4 alkylmorpholinio and
 N-C 1-4 alkylpiperazinio, each of
 said groups being unsubstituted or substituted by
 C 1-4 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 International
 Search and Preliminary Examination Guidelines Example
 33 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 different 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. 
 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2101-2102-[Reserved] 

 2103-Patent Examination Process 

 2104-Requirements of 35 U.S.C. 101 
 2104.01-Barred by Atomic Energy Act 

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

 2106.03-Eligibility Step 1: The Four Categories of Statutory Subject Matter 

 2106.04-Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception 
 2106.04(a)-Abstract Ideas 
 2106.04(a)(1)-Examples of Claims That Do Not Recite Abstract Ideas 

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

 2106.04(b)-Laws of Nature, Natural Phenomena & Products of Nature 

 2106.04(c)-The Markedly Different Characteristics Analysis 

 2106.04(d)-Integration of a Judicial Exception Into A Practical Application 
 2106.04(d)(1)-Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in
 Step 2A Prong Two 

 2106.04(d)(2)-Particular Treatment and Prophylaxis in Step 2A Prong Two 

 
 

 
 

 2106.05-Eligibility Step 2B: Whether a Claim Amounts to Significantly More 
 2106.05(a)-Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field 

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

 2106.05(d)-Well-Understood, Routine, Conventional Activity 

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

 2106.06-Streamlined Analysis 
 2106.06(a)-Eligibility is Self Evident 

 2106.06(b)-Clear Improvement to a Technology or to Computer Functionality 

 
 

 2106.07-Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility 
 2106.07(a)-Formulating a Rejection For Lack of Subject Matter Eligibility 
 2106.07(a)(1)-Form Paragraphs for use in Lack of Subject Matter Eligibility Rejections 

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

 2107-Guidelines for Examination of Applications for Compliance with the Utility Requirement 
 2107.01-General Principles Governing Utility Rejections 

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

 2111-Claim Interpretation; Broadest Reasonable Interpretation 
 2111.01-Plain Meaning 

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

 2111.04-“Adapted to,” “Adapted for,” “Wherein,” “Whereby,” and Contingent Clauses 

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

 2112-Requirements of Rejection Based on Inherency; Burden of Proof 
 2112.01-Composition, Product, and Apparatus Claims 

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

 2116-Novel, Nonobvious Starting Material or End Product 
 2116.01-Novel, Nonobvious Starting Material or End Product 

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

 2120-Rejection on Prior Art 
 2120.01-Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent 

 2120.02-Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b): Knowledge by Others, or Public Use, or On Sale 

 
 

 2121-Prior Art; General Level of Operability Required to Make a Prima Facie Case 
 2121.01-Use of Prior Art in Rejections Where Operability is in Question 

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

 2123-Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments 

 2124-Exception to the Rule That the Reference Must be Prior Art 
 2124.01-Tax Strategies Deemed Within the Prior Art 

 
 

 2125-Drawings as Prior Art 

 2126-Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b),
 and (d) 
 2126.01-Date of Availability of a Patent as a Reference 

 2126.02-Scope of Reference’s Disclosure Which Can Be Used to Reject Claims When the Reference Is a “Patent” but Not a “Publication” 

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

 2128-“Printed Publications” as Prior Art 
 2128.01-Level of Public Accessibility Required 

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

 2131-Anticipation — Application of 35 U.S.C. 102 
 2131.01-Multiple Reference 35 U.S.C. 102 Rejections 

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

 2132-Pre-AIA 35 U.S.C. 102(a) 
 2132.01-Overcoming a Pre-AIA 35 U.S.C. 102(a) Rejection based on a Printed Publication or Patent 

 
 

 2133-Pre-AIA 35 U.S.C. 102(b) 
 2133.01-Rejections of Continuation-In-Part (CIP) Applications 

 2133.02-Rejections Based on Publications and Patents 
 2133.02(a)-Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent 

 
 

 2133.03-Rejections Based on “Public Use” or “On Sale” 
 2133.03(a)-“Public Use” 

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

 2133.03(e)-Permitted Activity; Experimental Use 
 2133.03(e)(1)-Commercial Exploitation 

 2133.03(e)(2)-Intent 

 2133.03(e)(3)-“Completeness” of the Invention 

 2133.03(e)(4)-Factors Indicative of an Experimental Purpose 

 2133.03(e)(5)-Experimentation and Degree of Supervision and Control 

 2133.03(e)(6)-Permitted Experimental Activity and Testing 

 2133.03(e)(7)-Activity of an Independent Third Party Inventor 

 
 

 
 

 
 

 2134-Pre-AIA 35 U.S.C. 102(c) 

 2135-Pre-AIA 35 U.S.C. 102(d) 
 2135.01-The Four Requirements of Pre-AIA 35 U.S.C. 102(d) 

 
 

 2136-Pre-AIA 35 U.S.C. 102(e) 
 2136.01-Status of Unpublished or Published as Redacted U.S. Application as a Reference Under Pre-AIA 35 U.S.C. 102(e) 

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

 2136.04-Different Inventive Entity; Meaning of “By Another” 

 2136.05-Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e) 
 2136.05(a)-Antedating a Pre-AIA 35 U.S.C. 102(e) Reference 

 2136.05(b)-Showing The Reference Is Describing An Inventor's Or At Least One Joint Inventor's Own Work 

 
 

 
 

 2137-Pre-AIA 35 U.S.C. 102(f) 
 2137.01-[Reserved] 

 2137.02-[Reserved] 

 
 

 2138-Pre-AIA 35 U.S.C. 102(g) 
 2138.01-Interference Practice 

 2138.02-“The Invention Was Made in This Country” 

 2138.03-“By Another Who Has Not Abandoned, Suppressed, or Concealed It” 

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

 2139-Rejections Under Pre-AIA 35 U.S.C. 102 
 2139.01-Effective Filing Date of a Claimed Invention Under Pre-AIA 35 U.S.C. 102 

 2139.02-Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e) 

 2139.03-Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 102 

 
 

 2140-[Reserved] 

 2141-Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 
 2141.01-Scope and Content of the Prior Art 
 2141.01(a)-Analogous and Nonanalogous Art 

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

 2143-Examples of Basic Requirements of a Prima Facie Case of Obviousness 
 2143.01-Suggestion or Motivation To Modify the References 

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

 2144-Supporting a Rejection Under 35 U.S.C. 103 
 2144.01-Implicit Disclosure 

 2144.02-Reliance on Scientific Theory 

 2144.03-Reliance on Common Knowledge in the Art or “Well Known” Prior Art 

 2144.04-Legal Precedent as Source of Supporting Rationale 

 2144.05-Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions 

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

 2144.09-Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers) 

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

 2146-Pre-AIA 35 U.S.C. 103(c) 
 2146.01-Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c) 

 2146.02-Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) 

 2146.03-Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c) 
 2146.03(a)-Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) 

 
 

 
 

 2147-Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b) 

 2148-Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103 

 2149-[Reserved] 

 2150-Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America
 Invents Act 

 2151-Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA 

 2152-Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) 
 2152.01-Effective Filing Date of the Claimed Invention 

 2152.02-Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a Printed Publication, or in Public Use, on Sale, or Otherwise
 Available to the Public) 
 2152.02(a)-Patented 

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

 2152.02(f)-No Requirement of “By Others” 

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

 2152.05-Determining Whether To Apply 35 U.S.C. 102(a)(1) or 102(a)(2) 

 2152.06-Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection 

 2152.07-Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102 

 
 

 2153-Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1) 
 2153.01-Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor-Originated Disclosure
 Exception) 
 2153.01(a)-Grace Period Inventor-Originated Disclosure Exception 

 2153.01(b)-[Reserved] 

 
 

 2153.02-Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C. 102(a)(1) (Inventor-Originated Prior Public Disclosure
 Exception) 

 
 

 2154-Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date
 of the Claimed Invention 
 2154.01-Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S. Patent Documents” 
 2154.01(a)-WIPO Published Applications 

 2154.01(b)-Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d) 

 2154.01(c)-Requirement Of “Names Another Inventor” 

 2154.01(d)-Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application 

 
 

 2154.02-Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2) 
 2154.02(a)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception) 

 2154.02(b)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Prior Public Disclosure
 Exception) 

 2154.02(c)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment) 

 
 

 
 

 2155-Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections 
 2155.01-Showing That the Disclosure Was Made by the Inventor or a Joint Inventor 

 2155.02-Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor 

 2155.03-Showing That the Disclosure was Made, or That Subject Matter had Been Previously Publicly Disclosed, by Another Who Obtained
 the Subject Matter Disclosed Directly or Indirectly From the Inventor or a Joint Inventor 

 2155.04-Enablement 

 2155.05-Who May File an Affidavit or Declaration Under 37 CFR 1.130 

 2155.06-Situations in Which an Affidavit or Declaration Is Not Available 

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

 2158-AIA 35 U.S.C. 103 
 2158.01-Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 103 

 
 

 2159-Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of
 the AIA 
 2159.01-Applications Filed Before March 16, 2013 

 2159.02-Applications Filed on or After March 16, 2013 

 2159.03-Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013 

 2159.04-Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After
 March 16, 2013 

 
 

 2160-[Reserved] 

 2161-Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 
 2161.01-Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 
 

 2162-Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 2163-Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph,
 “Written Description” Requirement 
 2163.01-Support for the Claimed Subject Matter in Disclosure 

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

 2163.04-Burden on the Examiner with Regard to the Written Description Requirement 

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

 2163.07-Amendments to Application Which Are Supported in the Original Description 
 2163.07(a)-Inherent Function, Theory, or Advantage 

 2163.07(b)-Incorporation by Reference 

 
 

 
 

 2164-The Enablement Requirement 
 2164.01-Test of Enablement 
 2164.01(a)-Undue Experimentation Factors 

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

 2164.03-Relationship of Predictability of the Art and the Enablement Requirement 

 2164.04-Burden on the Examiner Under the Enablement Requirement 

 2164.05-Determination of Enablement Based on Evidence as a Whole 
 2164.05(a)-Specification Must Be Enabling as of the Filing Date 

 2164.05(b)-Specification Must Be Enabling to Persons Skilled in the Art 

 
 

 2164.06-Quantity of Experimentation 
 2164.06(a)-Examples of Enablement Issues-Missing Information 

 2164.06(b)-Examples of Enablement Issues — Biological and Chemical Cases 

 2164.06(c)-Examples of Enablement Issues – Computer Programming Cases 

 
 

 2164.07-Relationship of Enablement Requirement to Utility Requirement of 35 U.S.C. 101 

 2164.08-Enablement Commensurate in Scope With the Claims 
 2164.08(a)-Single Means Claim 

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

 2165-The Best Mode Requirement 
 2165.01-Considerations Relevant to Best Mode 

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

 2166-Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 2167-2170-[Reserved] 

 2171-Two Separate Requirements for Claims Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 

 2172-Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention 
 2172.01-Unclaimed Essential Subject Matter 

 
 

 2173-Claims Must Particularly Point Out and Distinctly Claim the Invention 
 2173.01-Interpreting the Claims 

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

 2173.05-Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 
 2173.05(a)-New Terminology 

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

 2173.05(d)-Exemplary Claim Language (“for example,” “such as”) 

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

 2173.05(p)-Claim Directed to Product-By- Process or Product and Process 

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

 2173.05(u)-Trademarks or Trade Names in a Claim 

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

 2175-Form Paragraphs for Use in Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 

 2176-2180-[Reserved] 

 2181-Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation 

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

 2184-Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made 

 2185-Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs 

 2186-Relationship to the Doctrine of Equivalents 

 2187-Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph 

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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