MPEP § 2111 — MPEP § 2111
Current through: 2022-07-01

2111-Claim Interpretation; Broadest Reasonable Interpretation 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2111 
 

 
 
 
 
 
 2111 Claim Interpretation; Broadest Reasonable Interpretation [R-10.2019]
 CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION IN LIGHT OF THE
 SPECIFICATION During patent examination, the pending claims must be “given their
 broadest reasonable interpretation consistent with the specification.” The Federal
 Circuit’s en banc decision in Phillips v. AWH
 Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly
 recognized that the USPTO employs the “broadest reasonable interpretation” standard:
 

 
 The Patent and Trademark Office (“PTO”) determines
 the scope of claims in patent applications not solely on the basis of the claim
 language, but upon giving claims their broadest reasonable construction “in light of
 the specification as it would be interpreted by one of ordinary skill in the art.”
 In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70
 USPQ2d 1827, 1830] (Fed. Cir. 2004). Indeed, the rules of the PTO require that
 application claims must “conform to the invention as set forth in the remainder of
 the specification and the terms and phrases used in the claims must find clear
 support or antecedent basis in the description so that the meaning of the terms in
 the claims may be ascertainable by reference to the description.” 37 CFR
 1.75(d)(1) .
 

 
 See also In re Suitco Surface, Inc., 603 F.3d 1255,
 1259, 94 USPQ2d 1640, 1643 (Fed. Cir. 2010); In re Hyatt, 211 F.3d
 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). 
 

 Patented claims are not given the broadest reasonable
 interpretation during court proceedings involving infringement and validity, and can be
 interpreted based on a fully developed prosecution record. In contrast, an examiner must
 construe claim terms in the broadest reasonable manner during prosecution as is
 reasonably allowed in an effort to establish a clear record of what applicant intends to
 claim. Thus, the Office does not interpret claims when examining patent applications in
 the same manner as the courts. In re Morris, 127 F.3d 1048, 1054, 44
 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989). 
 

 Because applicant has the opportunity to amend the claims
 during prosecution, giving a claim its broadest reasonable interpretation will reduce
 the possibility that the claim, once issued, will be interpreted more broadly than is
 justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984);
 In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
 1989) (“During patent examination the pending claims must be interpreted as broadly as
 their terms reasonably allow.”); In re Prater, 415 F.2d 1393,
 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (Claim 9 was directed to a process of
 analyzing data generated by mass spectrographic analysis of a gas. The process comprised
 selecting the data to be analyzed by subjecting the data to a mathematical manipulation.
 The examiner made rejections under 35 U.S.C. 101 and 35 U.S.C. 102 . In
 the 35 U.S.C.
 102 rejection, the examiner explained that the claim was
 anticipated by a mental process augmented by pencil and paper markings. The court agreed
 that the claim was not limited to using a machine to carry out the process since the
 claim did not explicitly set forth the machine. The court explained that “reading a
 claim in light of the specification, to thereby interpret limitations explicitly recited
 in the claim, is a quite different thing from ‘reading limitations of the specification
 into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed
 limitations which have no express basis in the claim.” The court found that applicant
 was advocating the latter, i.e., the impermissible importation of subject matter from
 the specification into the claim.). See also In re Morris, 127 F.3d
 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997) (The court held that the USPTO
 is not required, in the course of prosecution, to interpret claims in applications in
 the same manner as a court would interpret claims in an infringement suit. Rather, the
 “PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the
 words in their ordinary usage as they would be understood by one of ordinary skill in
 the art, taking into account whatever enlightenment by way of definitions or otherwise
 that may be afforded by the written description contained in applicant’s
 specification.”). 
 

 The broadest reasonable interpretation does not mean the broadest
 possible interpretation. Rather, the meaning given to a claim term must be consistent
 with the ordinary and customary meaning of the term (unless the term has been given a
 special definition in the specification), and must be consistent with the use of the
 claim term in the specification and drawings. Further, the broadest reasonable
 interpretation of the claims must be consistent with the interpretation that those
 skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359,
 49 USPQ2d 1464, 1468 (Fed. Cir. 1999) (The Board’s construction of the claim limitation
 “restore hair growth” as requiring the hair to be returned to its original state was
 held to be an incorrect interpretation of the limitation. The court held that,
 consistent with applicant’s disclosure and the disclosure of three patents from
 analogous arts using the same phrase to require only some increase in hair growth, one
 of ordinary skill would construe “restore hair growth” to mean that the claimed method
 increases the amount of hair grown on the scalp, but does not necessarily produce a full
 head of hair.). Thus the focus of the inquiry regarding the meaning of a claim should be
 what would be reasonable from the perspective of one of ordinary skill in the
 art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260, 94 USPQ2d
 1640, 1644 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364, 84 USPQ2d
 1749 (Fed. Cir. 2007). In Buszard, the claim was directed to a flame
 retardant composition comprising a flexible polyurethane foam reaction mixture. 504 F.3d
 at 1365, 84 USPQ2d at 1750. The Federal Circuit found that the Board’s interpretation
 that equated a “flexible” foam with a crushed “rigid” foam was not reasonable.
 Id. at 1367, 84 USPQ2d at 1751. Persuasive argument was presented
 that persons experienced in the field of polyurethane foams know that a flexible mixture
 is different than a rigid foam mixture. Id. at 1366, 84 USPQ2d at
 1751. 
 

 See MPEP § 2173.02 for further discussion
 of claim interpretation in the context of analyzing claims for compliance with
 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second
 paragraph. 
 

 
 2111.01 Plain Meaning [R-01.2024]

 [Editor Note: This MPEP section is applicable regardless of whether an
 application is examined under the AIA or under pre-AIA law. For applications subject
 to the first inventor to file (FITF) provisions of the AIA, the relevant time is
 "before the effective filing date of the claimed invention". For applications subject
 to pre-AIA 35
 U.S.C. 102 , the relevant time is "at the time of the
 invention". See MPEP § 2150 et seq. Many of the
 court decisions discussed in this section involved applications or patents subject to
 pre-AIA 35
 U.S.C. 102 . These court decisions may be applicable to
 applications and patents subject to AIA 35 U.S.C. 102 but the
 relevant time is before the effective filing date of the claimed invention and not at
 the time of the invention.] 

 I. THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING
 IS INCONSISTENT WITH THE SPECIFICATION Under a broadest reasonable interpretation (BRI),
 words of the claim must be given their plain meaning, unless such meaning is
 inconsistent with the specification. The plain meaning of a term means the ordinary
 and customary meaning given to the term by those of ordinary skill in the art at the
 relevant time. The ordinary and customary meaning of a term may be evidenced by a
 variety of sources, including the words of the claims themselves, the specification,
 drawings, and prior art. However, the best source for determining the meaning of a
 claim term is the specification - the greatest clarity is obtained when the
 specification serves as a glossary for the claim terms. Phillips v. AWH
 Corp., 415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005)
 ( en banc ) (“[T]he specification ‘is always highly relevant to
 the claim construction analysis. Usually, it is dispositive; it is the single best
 guide to the meaning of a disputed term.’” (quoting Vitronics Corp. v.
 Conceptronic Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The words of
 the claim must be given their plain meaning unless the plain meaning is inconsistent
 with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
 1320, 1322 (Fed. Cir. 1989) (discussed below); Chef America, Inc. v.
 Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004)
 (Ordinary, simple English words whose meaning is clear and unquestionable, absent any
 indication that their use in a particular context changes their meaning, are
 construed to mean exactly what they say. Thus, “heating the resulting batter-coated
 dough to a temperature in the range of about 400 o F to
 850 o F” required heating the dough, rather than the air
 inside an oven, to the specified temperature.). See also Salazar v. AT&T
 Mobility LLC, 64 F.4th 1311, 1317-1318, 2023 USPQ2d 412 (Fed. Cir. 2023)
 (While the claim language, “a microprocessor for generating . . . , said
 microprocessor creating . . . , a plurality of parameter sets retrieved by said
 microprocessor . . . , said microprocessor generating . . . ,” does not require there
 be only one microprocessor, the limitations to "said microprocessor" require a
 singular element—“a microprocessor”—to be capable of performing all of the recited
 “generating,” “creating,” and “retrieving” functions. Similarly, “[f]or a dog owner
 to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have
 two dogs, each able to perform just one of the tasks.” (quoting In re
 Varma, 816 F.3d 1352, 1363, 118 USPQ2d 1342, 1350 (Fed. Cir.
 2016))).
 

 The presumption that a term is given its ordinary and
 customary meaning may be rebutted by the applicant by clearly setting forth a
 different definition of the term in the specification. In re
 Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the
 USPTO looks to the ordinary use of the claim terms taking into account definitions or
 other “enlightenment” contained in the written description); But c.f. In re
 Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834
 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from
 the preferred embodiment described in the specification, even if it is the only
 embodiment described, absent clear disclaimer in the specification.”). When the
 specification sets a clear path to the claim language, the scope of the claims is
 more easily determined and the public notice function of the claims is best served. 
 

 

 II. IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION “Though understanding the claim language may be aided by
 explanations contained in the written description, it is important not to import into
 a claim limitations that are not part of the claim. For example, a particular
 embodiment appearing in the written description may not be read into a claim when the
 claim language is broader than the embodiment.” Superguide Corp. v. DirecTV
 Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir.
 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898,
 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court
 expressly rejected the contention that if a patent describes only a single
 embodiment, the claims of the patent must be construed as being limited to that
 embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (“Interpretation of descriptive
 statements in a patent’s written description is a difficult task, as an inherent
 tension exists as to whether a statement is a clear lexicographic definition or a
 description of a preferred embodiment. The problem is to interpret claims ‘in view of
 the specification’ without unnecessarily importing limitations from the specification
 into the claims.”); Altiris Inc. v. Symantec Corp., 318 F.3d 1363,
 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003) (Although the specification discussed
 only a single embodiment, the court held that it was improper to read a specific
 order of steps into method claims where, as a matter of logic or grammar, the
 language of the method claims did not impose a specific order on the performance of
 the method steps, and the specification did not directly or implicitly require a
 particular order). See also subsection IV, below. When an element is claimed using
 language falling under the scope of 35 U.S.C. 112(f) or
 pre-AIA
 35 U.S.C. 112 , 6 th paragraph (often
 broadly referred to as means- (or step-) plus- function language), the specification
 must be consulted to determine the structure, material, or acts corresponding to the
 function recited in the claim, and the claimed element is construed as limited to the
 corresponding structure, material, or acts described in the specification and
 equivalents thereof. In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845
 (Fed. Cir. 1994) (see MPEP § 2181 - MPEP § 2186 ).
 

 In Zletz, supra, the examiner and the Board had interpreted claims reading
 “normally solid polypropylene” and “normally solid polypropylene having a crystalline
 polypropylene content” as being limited to “normally solid linear high homopolymers
 of propylene which have a crystalline polypropylene content.” The court ruled that
 limitations, not present in the claims, were improperly imported from the
 specification. See also In re Marosi, 710 F.2d 799, 802, 218 USPQ
 289, 292 (Fed. Cir. 1983) (“'[C]laims are not to be read in a vacuum, and limitations
 therein are to be interpreted in light of the specification in giving them their
 ‘broadest reasonable interpretation.'” (quoting In re
 Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976)). The court
 looked to the specification to construe “essentially free of alkali metal” as
 including unavoidable levels of impurities but no more.). 
 

 In Sisvel Int’l S.A. v. Sierra Wireless,
 Inc., 81 F.4th 1231, 1236-37, 2023 USPQ2d 1030 (Fed. Cir. 2023), the
 court found that construing “connection rejection message” should be given its plain
 and ordinary meaning, and should not be construed in such a way as to improperly
 limit the claims to specific disclosed embodiments. The intrinsic evidence provided
 no basis to limit the claims to the preferred embodiments and a person of ordinary
 skill in the art would broadly interpret the claim language consistent with the broad
 statements in the specification. 
 

 III. “PLAIN MEANING” REFERS TO THE ORDINARY AND CUSTOMARY MEANING GIVEN TO THE TERM
 BY THOSE OF ORDINARY SKILL IN THE ART “[T]he ordinary and customary meaning of a claim term is the meaning
 that the term would have to a person of ordinary skill in the art in question at the
 time of the invention, i.e ., as of the effective filing date of
 the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
 1313, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc) ;
 Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67
 USPQ2d 1438, 1441 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive
 Surgical, Inc., 334 F.3d 1294, 1298, 67 USPQ2d 1132, 1136 (Fed. Cir.
 2003) (“In the absence of an express intent to impart a novel meaning to the claim
 terms, the words are presumed to take on the ordinary and customary meanings
 attributed to them by those of ordinary skill in the art.”). 
 

 The ordinary and customary meaning of a term may be evidenced by a
 variety of sources, including the words of the claims themselves, the specification,
 drawings, and prior art. However, the best source for determining the meaning of a
 claim term is the specification – the greatest clarity is obtained when the
 specification serves as a glossary for the claim terms. See, e.g., In re
 Abbott Diabetes Care Inc., 696 F.3d 1142, 1149-50, 104 USPQ2d 1337,
 1342-43 (Fed. Cir. 2012) (construing the term “electrochemical sensor” as “devoid of
 external connection cables or wires to connect to a sensor control unit” to be
 consistent with “the language of the claims and the specification”); In re
 Suitco Surface, Inc., 603 F.3d 1255, 1260-61, 94 USPQ2d 1640, 1644 (Fed.
 Cir. 2010) (construing the term “material for finishing the top surface of the floor”
 to mean “a clear, uniform layer on the top surface of a floor that is the final
 treatment or coating of a surface” to be consistent with “the express language of the
 claim and the specification”); Vitronics Corp. v. Conceptronic
 Inc., 90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996)
 (construing the term “solder reflow temperature” to mean “peak reflow temperature” of
 solder rather than the “liquidus temperature” of solder in order to remain consistent
 with the specification); Malvern Panalytical Inc. v. TA Instruments-Waters
 LLC, 85 F.4th 1365, 1374-75, 2023 USPQ2d 1297 (Fed. Cir. 2023) (the
 court construed “pipette guiding mechanism” as a mechanism that guides the pipette
 assembly either manually or automatically, and stated that the plain and ordinary
 meaning can be ascertained by examining the claim language, specification, and the
 prosecution history). 
 

 In some cases it is also appropriate to look to how the
 claim term is used in the prior art, which includes prior art patents, published
 applications, trade publications, and dictionaries. Phillips v. AWH
 Corp., 415 F.3d 1303, 1317, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)
 (“Although we have emphasized the importance of intrinsic evidence in claim
 construction, we have also authorized district courts to rely on extrinsic evidence,
 which “consists of all evidence external to the patent and prosecution history,
 including expert and inventor testimony, dictionaries, and learned treatises.”) 
 

 Any meaning of a claim term taken from the prior art
 must be consistent with the use of the claim term in the specification and drawings.
 Moreover, when the specification is clear about the scope and content of a claim
 term, there is no need to turn to extrinsic evidence for claim interpretation.
 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315,
 1326-28, 107 USPQ2d 1717, 1726-27 (Fed. Cir. 2013) (holding that “continuous
 microtextured skin layer over substantially the entire laminate” was clearly defined
 in the written description, and therefore, there was no need to turn to extrinsic
 evidence to construe the claim). See also Seabed Geosolutions (US) Inc. v.
 Magseis FF LLC, 8 F.4th 1285, 1290, 2021 USPQ2d 848 (Fed. Cir. 2021)
 (finding that where the intrinsic evidence (i.e., the claims, written description and
 prosecution history) clearly supports a claim interpretation, it is unnecessary to
 resort to extrinsic evidence.). However, in some instances where neither the claims,
 nor the specification, nor the prosecution history offer sufficient clarity on claim
 scope, extrinsic evidence may become a necessary part of claim interpretation. In
 Actelion, the claim language of “a pH of 13 or higher” was
 unclear after analysis of the intrinsic evidence. The court looked to the
 specification, which inconsistently described the level of specificity for a pH of
 13. Finally, the court turned to the prosecution history, which also did not provide
 any clarity as to whether a pH of 13 includes values that round to 13, such as 12.5.
 The court found that in this case extrinsic evidence should be consulted to
 understand “the meaning of a term in the relevant art during the relevant time
 period”. Actelion Pharmaceuticals Ltd v. Mylan Pharmaceuticals
 Inc., 85 F.4th 1167, 1172-74, 2023 USPQ2d 1314 (Fed. Cir. 2023) (quoting
 Teva Pharmaceuticals USA, Inc v. Sandoz, Inc., 574 U.S. 318,
 331, 135 S. Ct. 831, 841, 113 USPQ2d 1269, 1276 (2015)).
 

 IV. APPLICANT MAY BE OWN LEXICOGRAPHER AND/OR MAY DISAVOW CLAIM SCOPE The only exceptions to giving the words in a claim
 their ordinary and customary meaning in the art are (1) when the applicant acts as
 their own lexicographer; and (2) when the applicant disavows or disclaims the full
 scope of a claim term in the specification. To act as their own lexicographer, the
 applicant must clearly set forth a special definition of a claim term in the
 specification that differs from the plain and ordinary meaning it would otherwise
 possess. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002). The specification may also include an
 intentional disclaimer, or disavowal, of claim scope. In both of these cases, “the
 inventor’s intention, as expressed in the specification, is regarded as dispositive.”
 Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
 ( en banc ). See also Starhome GmbH v. AT&T Mobility
 LLC, 743 F.3d 849, 857, 109 USPQ2d 1885, 1890-91 (Fed. Cir. 2014)
 (holding that the term “gateway” should be given its ordinary and customary meaning
 of “a connection between different networks” because nothing in the specification
 indicated a clear intent to depart from that ordinary meaning); Thorner v.
 Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1367-68, 101 USPQ2d 1457,
 1460 (Fed. Cir. 2012) (The asserted claims of the patent were directed to a tactile
 feedback system for video game controllers comprising a flexible pad with a plurality
 of actuators “attached to said pad.” The court held that the claims were not limited
 to actuators attached to the external surface of the pad, even though the
 specification used the word “attached” when describing embodiments affixed to the
 external surface of the pad but the word “embedded” when describing embodiments
 affixed to the internal surface of the pad. The court explained that the plain and
 ordinary meaning of “attached” includes both external and internal attachments.
 Further, there is no clear and explicit statement in the specification to redefine
 “attached” or disavow the full scope of the term.). 
 

 A. Lexicography An applicant is entitled to be their own lexicographer and may
 rebut the presumption that claim terms are to be given their ordinary and
 customary meaning by clearly setting forth a definition of the term that is
 different from its ordinary and customary meaning(s) in the specification at the
 relevant time. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d
 1671, 1674 (Fed. Cir. 1994) (holding that an inventor may define specific terms
 used to describe invention, but must do so “with reasonable clarity,
 deliberateness, and precision” and, if done, must “‘set out his uncommon
 definition in some manner within the patent disclosure’ so as to give one of
 ordinary skill in the art notice of the change” in meaning) (quoting
 Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384,
 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)). 
 

 Where an explicit definition is provided by the
 applicant for a term, that definition will control interpretation of the term as
 it is used in the claim. Toro Co. v. White Consolidated Industries
 Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999)
 (meaning of words used in a claim is not construed in a “lexicographic vacuum, but
 in the context of the specification and drawings”). Thus, if a claim term is used
 in its ordinary and customary meaning throughout the specification, and the
 written description clearly indicates its meaning, then the term in the claim has
 that meaning. Old Town Canoe Co. v. Confluence Holdings Corp., 
 448 F.3d 1309, 1317, 78 USPQ2d 1705, 1711 (Fed. Cir. 2006) (The court held that
 “completion of coalescence” must be given its ordinary and customary meaning of
 reaching the end of coalescence. The court explained that even though coalescence
 could theoretically be “completed” by halting the molding process earlier, the
 specification clearly intended that completion of coalescence occurs only after
 the molding process reaches its optimum stage.).
 

 However, it is important to note that any special
 meaning assigned to a term “must be sufficiently clear in the specification that
 any departure from common usage would be so understood by a person of experience
 in the field of the invention.” Multiform Desiccants Inc. v. Medzam
 Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998). See
 also Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350,
 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999) and MPEP
 § 2173.05(a) . In Apple Inc. v. Corephotonics,
 Ltd., 81 F.4th 1353, 1358-60, 2023 USPQ2d 1056 (Fed. Cir. 2023), the
 claim phrase “a point of view of the Wide camera” was held to only require a “Wide
 perspective point of view or Wide position point of view” after reviewing the
 specification. In particular, the court found that a reasonable reading of the
 specification defined two different types of Wide point of view – perspective and
 position, whereas the claim language was broad as to the point of view. The court
 also explained that claims should not be interpreted in a way that would omit a
 disclosed embodiment, absent evidence to the contrary. Thus, given the review of
 the intrinsic evidence, the court held that the claim language only required Wide
 perspective or Wide position point of view, but not both.
 

 In some cases, the meaning of a particular claim
 term may be defined by implication, that is, according to the usage of the term in
 the context in the specification. See Phillips v. AWH Corp., 
 415 F.3d 1303, 1320-21, 75 USPQ2d 1321, 1332 (Fed. Cir. 2005) (en
 banc) ; Vitronics Corp. v. Conceptronic Inc., 90
 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996). But where the
 specification is ambiguous as to whether the inventor used claim terms
 inconsistent with their ordinary meaning, the ordinary meaning will apply.
 Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364,
 1370, 73 USPQ2d 1641, 1646 (Fed. Cir. 2005) (The Federal Circuit reversed the
 district court’s construction of the claim term “about” as “exactly.” The
 appellate court explained that a passage in the specification the district court
 relied upon for the definition of “about” was too ambiguous to redefine “about” to
 mean “exactly” in clear enough terms. The appellate court held that “about” should
 instead be given its plain and ordinary meaning of “approximately.”).
 

 B. Disavowal Applicant may also rebut the presumption of plain
 meaning by clearly disavowing the full scope of the claim term in the
 specification. Disavowal, or disclaimer of claim scope, is only considered when it
 is clear and unmistakable. See SciMed Life Sys., Inc. v. Advanced
 Cardiovascular Sys., Inc., 242 F.3d 1337, 1341, 58 USPQ2d 1059, 1063
 (Fed. Cir. 2001) (“Where the specification makes clear that the invention does not
 include a particular feature, that feature is deemed to be outside the reach of
 the claims of the patent, even though the language of the claims, read without
 reference to the specification, might be considered broad enough to encompass the
 feature in question.”); see also In re Am. Acad. Of Sci. Tech
 Ctr., 367 F.3d 1359, 1365-67, 70 USPQ2d 1827, 1831-33 (Fed. Cir.
 2004) (refusing to limit claim term “user computer” to only “single-user
 computers” even though “some of the language of the specification, when viewed in
 isolation, might lead a reader to conclude that the term . . . is meant to refer
 to a computer that serves only a single user, the specification as a whole
 suggests a construction that is not so narrow”). But, in some cases, disavowal of
 a broader claim scope may be made by implication, such as where the specification
 contains only disparaging remarks with respect to a feature and every embodiment
 in the specification excludes that feature. In re Abbott Diabetes Care
 Inc., 696 F.3d 1142, 1149-50, 104 USPQ2d 1337, 1342-43 (Fed. Cir.
 2012) (holding that the broadest reasonable interpretation of the claim term
 “electrochemical sensor” does not include a sensor having “external connection
 cables or wires” because the specification “repeatedly, consistently, and
 exclusively depict[s] an electrochemical sensor without external cables or wires
 while simultaneously disparaging sensors with external cables or wires”). But see
 In re Clarke, 809 Fed. Appx. 787, 794, 2020 USPQ2d 10253
 (Fed. Cir. 2020) (“The doctrine of prosecution history estoppel is
 inapplicable during prosecution. Instead the doctrine is
 applicable only to issued patents.”) (emphasis in the
 original). If the examiner believes that the broadest reasonable interpretation of
 a claim is narrower than what the words of the claim otherwise suggest as the
 result of implicit disavowal in the specification, then the examiner should make
 the interpretation clear on the record.
 

 See also MPEP § 2173.05(a) .
 

 V. SUMMARY OF DETERMINING THE MEANING OF A CLAIM TERM THAT DOES NOT INVOKE 35
 U.S.C. 112(f) This flow chart indicates the decisions an examiner
 would follow in order to ascertain the proper claim interpretation based on the plain
 meaning definition of BRI. With each decision in the flow chart, a different path may
 need to be taken to conclude whether plain meaning applies or a special definition
 applies.
 

 The first question is to determine whether a claim
 term has an ordinary and customary meaning to those of ordinary skill in the art. If
 so, then the examiner should check the specification to determine whether it provides
 a special definition for the claim term. If the specification does not provide a
 special definition for the claim term, the examiner should apply the ordinary and
 customary meaning to the claim term. If the specification provides a special
 definition for the claim term, the examiner should use the special definition.
 However, because there is a presumption that claim terms have their ordinary and
 customary meaning and the specification must provide a clear and intentional use of a
 special definition for the claim term to be treated as having a special definition,
 an Office action should acknowledge and identify the special definition in this
 situation.
 

 Moving back to the first question, if a claim term
 does not have an ordinary and customary meaning, the examiner should check the
 specification to determine whether it provides a meaning to the claim term. If no
 reasonably clear meaning can be ascribed to the claim term after considering the
 specification and prior art, the examiner should apply the broadest reasonable
 interpretation to the claim term as it can be best understood. Also, the claim should
 be rejected under 35 U.S.C. 112(b) and the
 specification objected to under 37 CFR 1.75(d) .
 

 If the specification provides a meaning for the claim
 term, the examiner should use the meaning provided by the specification. It may be
 appropriate for an Office action to acknowledge and identify the meaning provided by
 the specification in this situation.
 

 

 

 
 2111.02 Effect of Preamble [R-07.2022]

 The determination of whether a preamble limits a claim is made on a
 case-by-case basis in light of the facts in each case; there is no litmus test defining
 when a preamble limits the scope of a claim. Catalina Mktg. Int’l v.
 Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir.
 2002). See id. at 808-10, 62 USPQ2d at 1784-86 for a discussion of
 guideposts that have emerged from various decisions exploring the preamble’s effect on
 claim scope, as well as a hypothetical example illustrating these principles. 
 

 “[A] claim preamble has the import that the claim as a whole suggests
 for it.” Bell Communications Research, Inc. v. Vitalink Communications
 Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). “If the
 claim preamble, when read in the context of the entire claim, recites limitations of the
 claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to
 the claim, then the claim preamble should be construed as if in the balance of the
 claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). See also Jansen v. Rexall
 Sundown, Inc., 342 F.3d 1329, 1333, 68 USPQ2d 1154, 1158 (Fed. Cir. 2003)
 (In considering the effect of the preamble in a claim directed to a method of treating
 or preventing pernicious anemia in humans by administering a certain vitamin preparation
 to “a human in need thereof,” the court held that the claims’ recitation of a patient or
 a human “in need” gives life and meaning to the preamble’s statement of
 purpose.). Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481
 (CCPA 1951) (A preamble reciting “[a]n abrasive article” was deemed essential to point
 out the invention defined by claims to an article comprising abrasive grains and a
 hardened binder and the process of making it. The court stated “it is only by that
 phrase that it can be known that the subject matter defined by the claims is comprised
 as an abrasive article. Every union of substances capable inter alia 
 of use as abrasive grains and a binder is not an ‘abrasive article.’” Therefore, the
 preamble served to further define the structure of the article produced.). 
 

 I. PREAMBLE STATEMENTS LIMITING STRUCTURE Any terminology in the preamble that limits the structure of the
 claimed invention must be treated as a claim limitation. See, e.g., Corning
 Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257,
 9 USPQ2d 1962, 1966 (Fed. Cir. 1989) (The determination of whether preamble
 recitations are structural limitations can be resolved only on review of the entirety
 of the application “to gain an understanding of what the inventors actually invented
 and intended to encompass by the claim” as drafted without importing “‘extraneous’
 limitations from the specification.”); Pac-Tec Inc. v. Amerace
 Corp., 903 F.2d 796, 801, 14 USPQ2d 1871, 1876 (Fed. Cir. 1990)
 (determining that preamble language that constitutes a structural limitation is
 actually part of the claimed invention). See also In re Stencel, 
 828 F.2d 751, 4 USPQ2d 1071 (Fed. Cir. 1987) (The claim at issue was directed to a
 driver for setting a joint of a threaded collar; however, the body of the claim did
 not directly include the structure of the collar as part of the claimed article. The
 examiner did not consider the preamble, which did set forth the structure of the
 collar, as limiting the claim. The court found that the collar structure could not be
 ignored. While the claim was not directly limited to the collar, the collar structure
 recited in the preamble did limit the structure of the driver. “[T]he framework - the
 teachings of the prior art - against which patentability is measured is not all
 drivers broadly, but drivers suitable for use in combination with this collar, for
 the claims are so limited.” Id. at 1073, 828 F.2d at 754.).
 

 II. PREAMBLE STATEMENTS RECITING PURPOSE OR INTENDED USE The claim preamble must be read in the context of the entire claim.
 The determination of whether preamble recitations are structural limitations or mere
 statements of purpose or use “can be resolved only on review of the entirety of the
 [record] to gain an understanding of what the inventors actually invented and
 intended to encompass by the claim” as drafted without importing “‘extraneous’
 limitations from the specification.” Corning Glass Works, 868 F.2d
 at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth
 all of the limitations of the claimed invention, and the preamble merely states, for
 example, the purpose or intended use of the invention, rather than any distinct
 definition of any of the claimed invention’s limitations, then the preamble is not
 considered a limitation and is of no significance to claim construction.
 Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962
 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in
 one patent’s claim is limiting but is not in a related patent); Pitney
 Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161,
 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478,
 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally
 complete invention in the claim body and uses the preamble only to state a purpose or
 intended use for the invention, the preamble is not a claim limitation”);
 Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble
 is not a limitation where claim is directed to a product and the preamble merely
 recites a property inherent in an old product defined by the remainder of the claim);
 STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350
 (Fed. Cir. 2000) (holding that the preamble phrase “which provides improved playing
 and handling characteristics” in a claim drawn to a head for a lacrosse stick was not
 a claim limitation). Compare Jansen v. Rexall Sundown, Inc., 342
 F.3d 1329, 1333-34, 68 USPQ2d 1154, 1158 (Fed. Cir. 2003) (In a claim directed to a
 method of treating or preventing pernicious anemia in humans by administering a
 certain vitamin preparation to “a human in need thereof,” the court held that the
 preamble is not merely a statement of effect that may or may not be desired or
 appreciated, but rather is a statement of the intentional purpose for which the
 method must be performed. Thus the claim is properly interpreted to mean that the
 vitamin preparation must be administered to a human with a recognized need to treat
 or prevent pernicious anemia.); Nantkwest , Inc. v. Lee, 686 Fed.
 App'x 864, 867 (Fed. Cir. 2017) (nonprecedential) (The court found that the preamble
 phrase “treating a cancer” “’require[s] lysis of many cells, in order to accomplish
 the goal of treating cancer’ and not merely lysing one or a few cancer cells.”);
 In re Cruciferous Sprout Litig., 301 F.3d 1343, 1346-48, 64
 USPQ2d 1202, 1204-05 (Fed. Cir. 2002) (A claim at issue was directed to a method of
 preparing a food rich in glucosinolates wherein cruciferous sprouts are harvested
 prior to the 2-leaf stage. The court held that the preamble phrase “rich in
 glucosinolates” helps define the claimed invention, as evidenced by the specification
 and prosecution history, and thus is a limitation of the claim (although the claim
 was anticipated by prior art that produced sprouts inherently “rich in
 glucosinolates”)).
 

 During examination, statements in the preamble reciting the purpose
 or intended use of the claimed invention must be evaluated to determine whether or
 not the recited purpose or intended use results in a structural difference (or, in
 the case of process claims, manipulative difference) between the claimed invention
 and the prior art. If so, the recitation serves to limit the claim. See, e.g.,
 In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963)
 (The claims were directed to a core member for hair curlers and a process of making a
 core member for hair curlers. The court held that the intended use of hair curling
 was of no significance to the structure and process of making.); In re
 Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of
 intended use in an apparatus claim did not distinguish over the prior art apparatus).
 To satisfy an intended use limitation which is limiting, a prior art structure which
 is capable of performing the intended use as recited in the preamble meets the claim.
 See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual
 finding that the reference dispenser (a spout disclosed as useful for purposes such
 as dispensing oil from an oil can) would be capable of dispensing popcorn in the
 manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a
 specified manner)) and cases cited therein. See also MPEP § 2112 -
 MPEP §
 2112.02 . 
 

 However, a “preamble may provide context for claim construction,
 particularly, where … that preamble’s statement of intended use forms the basis for
 distinguishing the prior art in the patent’s prosecution history.”
 Metabolite Labs., Inc. v. Corp. of Am. Holdings, 370 F.3d 1354,
 1358-62, 71 USPQ2d 1081, 1084-87 (Fed. Cir. 2004). The patent claim at issue was
 directed to a two-step method for detecting a deficiency of vitamin
 B 12 or folic acid, involving (i) assaying a body fluid for
 an “elevated level” of homocysteine, and (ii) “correlating” an “elevated” level with
 a vitamin deficiency. Id. at 1358-59, 71 USPQ2d at 1084. The court
 stated that the disputed claim term “correlating” can include comparing with either
 an unelevated level or elevated level, as opposed to only an elevated level because
 adding the “correlating” step in the claim during prosecution to overcome prior art
 tied the preamble directly to the “correlating” step. Id. at 1362,
 71 USPQ2d at 1087. The recitation of the intended use of “detecting” a vitamin
 deficiency in the preamble rendered the claimed invention a method for “detecting,”
 and, thus, was not limited to detecting “elevated” levels. Id. 

 See also Catalina Mktg. Int’l, 289 F.3d at
 808-09, 62 USPQ2d at 1785 (“[C]lear reliance on the preamble during prosecution to
 distinguish the claimed invention from the prior art transforms the preamble into a
 claim limitation because such reliance indicates use of the preamble to define, in
 part, the claimed invention.…Without such reliance, however, a preamble generally is
 not limiting when the claim body describes a structurally complete invention such
 that deletion of the preamble phrase does not affect the structure or steps of the
 claimed invention.” Consequently, “preamble language merely extolling benefits or
 features of the claimed invention does not limit the claim scope without clear
 reliance on those benefits or features as patentably significant.”). In
 Poly-America LP v. GSE Lining Tech. Inc., 383 F.3d 1303, 1310,
 72 USPQ2d 1685, 1689 (Fed. Cir. 2004), the court stated that “a ‘[r]eview of the
 entirety of the ’047 patent reveals that the preamble language relating to
 ‘blown-film’ does not state a purpose or an intended use of the invention, but rather
 discloses a fundamental characteristic of the claimed invention that is properly
 construed as a limitation of the claim.’” Compare Intirtool, Ltd. v. Texar
 Corp., 369 F.3d 1289, 1294-96, 70 USPQ2d 1780, 1783-84 (Fed. Cir. 2004)
 (holding that the preamble of a patent claim directed to a “hand-held punch pliers
 for simultaneously punching and connecting overlapping sheet metal” was not a
 limitation of the claim because (i) the body of the claim described a “structurally
 complete invention” without the preamble, and (ii) statements in prosecution history
 referring to “punching and connecting” function of invention did not constitute
 “clear reliance” on the preamble needed to make the preamble a limitation).
 

 

 
 2111.03 Transitional Phrases [R-01.2024]

 The transitional phrases “comprising”, “consisting essentially of” and
 “consisting of” define the scope of a claim with respect to what unrecited additional
 components or steps, if any, are excluded from the scope of the claim. The determination
 of what is or is not excluded by a transitional phrase must be made on a case-by-case
 basis in light of the facts of each case. 
 

 I. COMPRISING The transitional term “comprising”, which is synonymous with
 “including,” “containing,” or “characterized by,” is inclusive or open-ended and does
 not exclude additional, unrecited elements or method steps. See, e.g., Mars
 Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed.
 Cir. 2004) (“[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are
 open-ended.”). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 
 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) (“The transition
 ‘comprising’ in a method claim indicates that the claim is open-ended and allows for
 additional steps.”); Genentech, Inc. v. Chiron Corp., 112 F.3d
 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used
 in claim language which means that the named elements are essential, but other
 elements may be added and still form a construct within the scope of the claim.);
 Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986);
 In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981);
 Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising”
 leaves “the claim open for the inclusion of unspecified ingredients even in major
 amounts”). In Gillette Co. v. Energizer Holdings Inc., 405 F.3d
 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005), the court held that a claim
 to “a safety razor blade unit comprising a guard, a cap, and a group of first,
 second, and third blades” encompasses razors with more than three blades because the
 transitional phrase “comprising” in the preamble and the phrase “group of” are
 presumptively open-ended. “The word ‘comprising’ transitioning from the preamble to
 the body signals that the entire claim is presumptively open-ended.”
 Id. In contrast, the court noted the phrase “group consisting
 of” is a closed term, which is often used in claim drafting to signal a “Markush
 group” that is by its nature closed. Id. The court also emphasized
 that reference to “first,” “second,” and “third” blades in the claim was not used to
 show a serial or numerical limitation but instead was used to distinguish or identify
 the various members of the group. Id. 

 In Amgen Inc. v. Amneal Pharmaceuticals
 LLC, 945 F.3d 1368, 1379, 2020 USPQ2d 3197 (Fed. Cir. 2020), in an
 infringement suit, the court interpreted a claim for a pharmaceutical composition
 having a “comprising” transition phrase and following limitations, including
 limitations requiring “at least one” binder and “at least one” disintegrant, each
 “consisting of” items listed in a Markush group. The court found that the Markush
 grouping recited particular binders or disintegrants, but while the components of the
 Markush grouping are closed as to the components therein, the claim transition
 “comprising” allowed for additional component(s) that were functionally similar to
 the members of the Markush grouping. Thus, the plain language of the claim requires
 “at least one” of the Markush members and does not further limit the claim to only
 binders and disintegrants listed in the Markush grouping. See also
 MPEP
 § 2117 for further discussion of a Markush group. 
 

 II. CONSISTING OF The transitional phrase “consisting of” excludes any element, step,
 or ingredient not specified in the claim. In re Gray, 53 F.2d 520,
 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd.
 App. 1948) (“consisting of” defined as “closing the claim to the inclusion of
 materials other than those recited except for impurities ordinarily associated
 therewith”). But see Norian Corp. v. Stryker Corp., 363 F.3d 1321,
 1331-32, 70 USPQ2d 1508, 1516 (Fed. Cir. 2004) (holding that a bone repair kit
 “consisting of” claimed chemicals was infringed by a bone repair kit including a
 spatula in addition to the claimed chemicals because the presence of the spatula was
 unrelated to the claimed invention). A claim which depends from a claim which
 “consists of” the recited elements or steps cannot add an element or step. 
 

 A claim element defined by selection from a group of
 alternatives (a Markush grouping; see MPEP §§
 2117 and 2173.05(h) ) requires selection from
 a closed group “consisting of” (rather than “comprising” or “including”) the
 alternative members. Abbott Labs. v. Baxter Pharmaceutical Products
 Inc., 334 F.3d 1274, 1280, 67 USPQ2d 1191, 1196-97 (Fed. Cir. 2003). If
 the claim element is intended to encompass combinations or mixtures of the
 alternatives set forth in the Markush grouping, the claim may include qualifying
 language preceding the recited alternatives (such as “at least one member” selected
 from the group), or within the list of alternatives (such as “or mixtures thereof”).
 Id. In the absence of such qualifying language there is a
 presumption that the Markush group is closed to combinations or mixtures. Cf.
 Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics
 Corp., 831 F.3d 1350, 1363-64, 119 USPQ2d 1773, 1784-85 (Fed. Cir. 2016)
 (presumption that Markush grouping does not encompass mixtures of listed resins
 overcome by intrinsic evidence in a dependent claim and the specification). See also
 Amgen Inc. v. Amneal Pharmaceuticals LLC, 945 F.3d 1368,
 1378-79, 2020 USPQ2d 3179 (Fed. Cir. 2020) (the claim’s “comprising” transition
 phrase does not foreclose additional binders and disintegrants when an accused
 infringing product contains and meets the limitation’s requirements for one of the
 binders or disintegrants recited in the Markush groupings – there is no inconsistency
 with another binder or disintegrant outside of the Markush group also being part of
 the claimed formulation). 
 

 When the phrase “consisting of” appears in a clause
 of the body of a claim, rather than immediately following the preamble, there is an
 “exceptionally strong presumption that a claim term set off with ‘consisting of’ is
 closed to unrecited elements.” Multilayer Stretch Cling Film Holdings, Inc.
 v. Berry Plastics Corp., 831 F.3d 1350, 1359, 119 USPQ2d 1773, 1781
 (Fed. Cir. 2016) (a layer “selected from the group consisting of” specific resins is
 closed to resins other than those listed). However, the “consisting of” phrase limits
 only the element set forth in that clause; other elements are not excluded from the
 claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed.
 Cir. 1986). See also In re Crish, 393 F.3d 1253, 73 USPQ2d 1364
 (Fed. Cir. 2004) (The claims at issue “related to purified DNA molecules having
 promoter activity for the human involucrin gene (hINV).” Id., 73
 USPQ2d at 1365. In determining the scope of applicant’s claims directed to “a
 purified oligonucleotide comprising at least a portion of the
 nucleotide sequence of SEQ ID NO:1 wherein said portion consists
 of the nucleotide sequence from … to 2473 of SEQ ID NO:1, and wherein
 said portion of the nucleotide sequence of SEQ ID NO:1 has promoter activity,” the
 court stated that the use of “consists” in the body of the claims did not limit the
 open-ended “comprising” language in the claims (emphases added).
 Id. at 1257, 73 USPQ2d at 1367. The court held that the claimed
 promoter sequence designated as SEQ ID NO:1 was obtained by sequencing the same prior
 art plasmid and was therefore anticipated by the prior art plasmid which necessarily
 possessed the same DNA sequence as the claimed oligonucleotides.
 Id. at 1256 and 1259, 73 USPQ2d at 1366 and 1369. The court
 affirmed the Board’s interpretation that the transition phrase “consists” did not
 limit the claims to only the recited numbered nucleotide sequences of SEQ ID NO:1 and
 that “the transition language ‘comprising’ allowed the claims to cover the entire
 involucrin gene plus other portions of the plasmid, as long as the gene contained the
 specific portions of SEQ ID NO:1 recited by the claim[s].” Id. at
 1256, 73 USPQ2d at 1366.).
 

 III. CONSISTING ESSENTIALLY
 OF The transitional phrase “consisting essentially of” limits the scope
 of a claim to the specified materials or steps “and those that do not
 materially affect the basic and
 novel characteristic(s)” of the claimed invention.
 In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976)
 (emphasis in original) (Prior art hydraulic fluid required a dispersant which
 appellants argued was excluded from claims limited to a functional fluid “consisting
 essentially of” certain components. In finding the claims did not exclude the prior
 art dispersant, the court noted that appellants’ specification indicated the claimed
 composition can contain any well-known additive such as a dispersant, and there was
 no evidence that the presence of a dispersant would materially affect the basic and
 novel characteristic of the claimed invention. The prior art composition had the same
 basic and novel characteristic (increased oxidation resistance) as well as additional
 enhanced detergent and dispersant characteristics.). “A ‘consisting essentially of’
 claim occupies a middle ground between closed claims that are written in a
 ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’
 format.” PPG Industries v. Guardian Industries, 156 F.3d 1351,
 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also Atlas Powder v.
 E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir.
 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ 893 (CCPA
 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7
 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching for and applying prior
 art under 35 U.S.C.
 102 and 103 , absent a clear indication in
 the specification or claims of what the basic and novel characteristics actually are,
 “consisting essentially of” will be construed as equivalent to “comprising.” See,
 e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (“PPG could have
 defined the scope of the phrase ‘consisting essentially of’ for purposes of its
 patent by making clear in its specification what it regarded as constituting a
 material change in the basic and novel characteristics of the invention.”). See also
 AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d
 1280, 1283-84 (Fed. Cir. 2003) (Applicant’s statement in the specification that
 “silicon contents in the coating metal should not exceed about 0.5% by weight” along
 with a discussion of the deleterious effects of silicon provided basis to conclude
 that silicon in excess of 0.5% by weight would materially alter the basic and
 novel properties of the invention. Thus, “consisting essentially of” as recited in
 the preamble was interpreted to permit no more than 0.5% by weight of silicon in the
 aluminum coating.); In re Janakirama-Rao, 317 F.2d 951, 954, 137
 USPQ 893, 895-96 (CCPA 1963). If an applicant contends that additional steps or
 materials in the prior art are excluded by the recitation of “consisting essentially
 of,” applicant has the burden of showing that the introduction of additional steps or
 components would materially change the characteristics of the claimed invention.
 In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See
 also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App.
 & Inter. 1989) (“Although ‘consisting essentially of’ is typically used and
 defined in the context of compositions of matter, we find nothing intrinsically wrong
 with the use of such language as a modifier of method steps. . . [rendering] the
 claim open only for the inclusion of steps which do not materially affect the basic
 and novel characteristics of the claimed method. To determine the steps included
 versus excluded the claim must be read in light of the specification. . . . [I]t is
 an applicant’s burden to establish that a step practiced in a prior art method is
 excluded from his claims by ‘consisting essentially of’ language.”). 
 

 IV. OTHER TRANSITIONAL PHRASES Transitional phrases such as “having” must be interpreted in light
 of the specification to determine whether open or closed claim language is intended.
 See, e.g., Lampi Corp. v. American Power Products Inc., 228 F.3d
 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (interpreting the term “having” as
 open terminology, allowing the inclusion of other components in addition to those
 recited); Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l
 Inc., 246 F.3d 1336, 1348, 57 USPQ2d 1953, 1959 (Fed. Cir. 2001) (term
 “having” in transitional phrase “does not create a presumption that the body of the
 claim is open”); Regents of the Univ. of Cal. v. Eli Lilly &
 Co., 119 F.3d 1559, 1573, 43 USPQ2d 1398, 1410 (Fed. Cir. 1997) (in the
 context of a cDNA having a sequence coding for human PI, the term “having” still
 permitted inclusion of other moieties). The transitional phrase “composed of” has
 been interpreted in the same manner as either “consisting of” or “consisting
 essentially of,” depending on the facts of the particular case. See AFG
 Industries, Inc. v. Cardinal IG Company, 239 F.3d 1239, 1245, 57 USPQ2d
 1776, 1780-81 (Fed. Cir. 2001) (based on specification and other evidence, “composed
 of” interpreted in same manner as “consisting essentially of”); In re
 Bertsch, 132 F.2d 1014, 1019-20, 56 USPQ 379, 384 (CCPA 1942) (“Composed
 of” interpreted in same manner as “consisting of”; however, the court further
 remarked that “the words ‘composed of’ may under certain circumstances be given, in
 patent law, a broader meaning than ‘consisting of.’”). 
 

 

 
 2111.04 “Adapted to,” “Adapted for,” “Wherein,” “Whereby,” and
 Contingent Clauses [R-10.2019]
 
 I. “ADAPTED TO,” “ADAPTED FOR,”
 “WHEREIN," and "WHEREBY” Claim scope is not limited by claim language that suggests or makes
 optional but does not require steps to be performed, or by claim language that does
 not limit a claim to a particular structure. However, examples of claim language,
 although not exhaustive, that may raise a question as to the limiting effect of the
 language in a claim are:
 

 
 (A) “adapted to” or “adapted for” clauses; 

 (B) “wherein” clauses; and

 (C) “whereby” clauses.

 
 The determination of whether each of these clauses is a limitation
 in a claim depends on the specific facts of the case. See, e.g., Griffin v.
 Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002) (finding
 that a “wherein” clause limited a process claim where the clause gave “meaning and
 purpose to the manipulative steps”). In In re Giannelli, 739 F.3d
 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014), the court found that an "adapted
 to" clause limited a machine claim where "the written description makes clear that
 'adapted to,' as used in the [patent] application, has a narrower meaning, viz., that
 the claimed machine is designed or constructed to be used as a rowing machine whereby
 a pulling force is exerted on the handles." In Hoffer v. Microsoft
 Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the
 court held that when a “‘whereby’ clause states a condition that is material to
 patentability, it cannot be ignored in order to change the substance of the
 invention.” Id. However, the court noted that a “‘whereby clause
 in a method claim is not given weight when it simply expresses the intended result of
 a process step positively recited.’” Id. (quoting Minton
 v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67
 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
 

 II. CONTINGENT
 LIMITATIONS The broadest reasonable interpretation of a method
 (or process) claim having contingent limitations requires only those steps that must
 be performed and does not include steps that are not required to be performed because
 the condition(s) precedent are not met. For example, assume a method claim requires
 step A if a first condition happens and step B if a second condition happens. If the
 claimed invention may be practiced without either the first or second condition
 happening, then neither step A or B is required by the broadest reasonable
 interpretation of the claim. If the claimed invention requires the first condition to
 occur, then the broadest reasonable interpretation of the claim requires step A. If
 the claimed invention requires both the first and second conditions to occur, then
 the broadest reasonable interpretation of the claim requires both steps A and B. 
 

 The broadest reasonable interpretation of a system
 (or apparatus or product) claim having structure that performs a function, which only
 needs to occur if a condition precedent is met, requires structure for performing the
 function should the condition occur. The system claim interpretation differs from a
 method claim interpretation because the claimed structure must be present in the
 system regardless of whether the condition is met and the function is actually
 performed. 
 

 See Ex parte Schulhauser, Appeal
 2013-007847 (PTAB April 28, 2016) for an analysis of contingent claim limitations in
 the context of both method claims and system claims. In
 Schulhauser, both method claims and system claims recited the
 same contingent step. When analyzing the claimed method as a whole, the PTAB
 determined that giving the claim its broadest reasonable interpretation, “[i]f the
 condition for performing a contingent step is not satisfied, the performance recited
 by the step need not be carried out in order for the claimed method to be performed”
 (quotation omitted). Schulhauser at 10. When analyzing the claimed
 system as a whole, the PTAB determined that “[t]he broadest reasonable interpretation
 of a system claim having structure that performs a function, which only needs to
 occur if a condition precedent is met, still requires structure for performing the
 function should the condition occur.” Schulhauser at 14. Therefore
 "[t]he Examiner did not need to present evidence of the obviousness of the [ ] method
 steps of claim 1 that are not required to be performed under a broadest reasonable
 interpretation of the claim (e.g., instances in which the electrocardiac signal data
 is not within the threshold electrocardiac criteria such that the condition precedent
 for the determining step and the remaining steps of claim 1 has not been met);"
 however to render the claimed system obvious, the prior art must teach the structure
 that performs the function of the contingent step along with the other recited claim
 limitations. Schulhauser at 9, 14. 
 

 See also MPEP § 2143.03 .
 

 

 
 2111.05 Functional and Nonfunctional Descriptive
 Material [R-07.2022]
 

 USPTO personnel must consider all claim limitations when
 determining patentability of an invention over the prior art. In re
 Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). Since a
 claim must be read as a whole, USPTO personnel may not disregard claim limitations that
 include printed matter. See Id. at 1384, 217 USPQ at 403; see also
 Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). The
 first step of the printed matter analysis is the determination that the limitation in
 question is in fact directed toward printed matter. “Our past cases establish a
 necessary condition for falling into the category of printed matter: a limitation is
 printed matter only if it claims the content of information.” See In re
 DiStefano, 808 F.3d 845, 848, 117 USPQ2d 1265, 1267 (Fed. Cir. 2015).
 “[O]nce it is determined that the limitation is directed to printed matter, [the
 examiner] must then determine if the matter is functionally or structurally related to
 the associated physical substrate, and only if the answer is ‘no’ is the printed matter
 owed no patentable weight.” Id. at 850, 117 USPQ2d at 1268. If a new
 and nonobvious functional relationship between the printed matter and the substrate does
 exist, the examiner should give patentable weight to printed matter. See In re
 Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir.
 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004);
 In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir.
 1983). The rationale behind the printed matter cases, in which, for example, written
 instructions are added to a known product, has been extended to method claims in which
 an instructional limitation is added to a method known in the art. Similar to the
 inquiry for products with printed matter thereon, in such method cases the relevant
 inquiry is whether a new and nonobvious functional relationship with the known method
 exists. See In re DiStefano, 808 F.3d 845, 117 USPQ2d 1265 (Fed. Cir.
 2015); In re Kao, 639 F.3d 1057, 1072-73, 98 USPQ2d 1799, 1811-12
 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616
 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010). 
 

 I. DETERMINING WHETHER A FUNCTIONAL RELATIONSHIP EXISTS BETWEEN PRINTED MATTER
 AND ASSOCIATED SUBSTRATE 
 

 A. Evidence Supporting a Functional Relationship To be given patentable weight, the printed matter
 and associated product must be in a functional relationship. A functional
 relationship can be found where the printed matter performs some function with
 respect to the product to which it is associated. See Lowry, 32
 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at
 1386, 217 USPQ at 404). For instance, indicia on a measuring cup perform the
 function of indicating volume within that measuring cup. See In re
 Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969). A
 functional relationship can also be found where the product performs some function
 with respect to the printed matter to which it is associated. For instance, where
 a hatband places a string of numbers in a certain physical relationship to each
 other such that a claimed algorithm is satisfied due to the physical structure of
 the hatband, the hatband performs a function with respect to the string of
 numbers. See Gulack, 703 F.2d at 1386-87, 217 USPQ at 405. 
 

 B. Evidence Against a Functional Relationship Where a product merely serves as a support for
 printed matter, no functional relationship exists. These situations may arise
 where the claim as a whole is directed towards conveying a message or meaning to a
 human reader independent of the supporting product. For example, a hatband with
 images displayed on the hatband but not arranged in any particular sequence was
 found to only serve as support and display for the printed matter. See
 Gulack, 703 F.2d at 1386, 217 USPQ at 404. Another example
 in which a product merely serves as a support would occur for a deck of playing
 cards having images on each card. See In re Bryan, 323 Fed.
 App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the
 applicant asserted that the printed matter allowed the cards to be “collected,
 traded, and drawn”; “identify and distinguish one deck of cards from another”; and
 “enable[] the card to be traded and blind drawn”. However, the court found that
 these functions do not pertain to the structure of the apparatus and were instead
 drawn to the method or process of playing a game. See also Ex parte
 Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which
 the invention was directed to a set of dice by means of which a game may be
 played. The claims differed from the prior art solely by the printed matter in the
 dice. The claims were properly rejected on prior art because there was no new
 feature of physical structure and no new relation of printed matter to physical
 structure. For example, a claimed measuring tape having electrical wiring
 information thereon, or a generically claimed substrate having a picture of a golf
 ball thereupon, would lack a functional relationship as the claims as a whole are
 directed towards conveying wiring information (unrelated to the measuring tape) or
 an aesthetically pleasing image (unrelated to the substrate) to the reader.
 Additionally, where the printed matter and product do not depend upon each other,
 no functional relationship exists. For example, in a kit containing a set of
 chemicals and a printed set of instructions for using the chemicals, the
 instructions are not related to that particular set of chemicals. In re
 Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864.
 

 II. FUNCTIONAL RELATIONSHIP BETWEEN PRINTED MATTER AND ASSOCIATED SUBSTRATE MUST
 BE NEW AND NONOBVIOUS Once a functional relationship between the product and
 associated printed matter is found, the investigation shifts to the determination of
 whether the relationship is new and nonobvious. For example, a claim to a color-coded
 indicia on a container in which the color indicates the expiration date of the
 container may give rise to a functional relationship. The claim may, however, be
 anticipated by prior art that reads on the claimed invention, or by a combination of
 prior art that teaches the claimed invention.
 

 III. MACHINE-READABLE MEDIA When determining the scope of a claim directed to a
 computer-readable medium containing certain programming, the examiner should first
 look to the relationship between the programming and the intended computer system.
 Where the programming performs some function with respect to the computer with which
 it is associated, a functional relationship will be found. For instance, a claim to
 computer-readable medium programmed with attribute data objects that perform the
 function of facilitating retrieval, addition, and removal of information in the
 intended computer system, establishes a functional relationship such that the claimed
 attribute data objects are given patentable weight. See Lowry, 32
 F.3d at 1583-84, 32 USPQ2d at 1035.
 

 However, where the claim as a whole is directed to
 conveying a message or meaning to a human reader independent of the intended computer
 system, and/or the computer-readable medium merely serves as a support for
 information or data, no functional relationship exists. For example, a claim to a
 memory stick containing tables of batting averages, or tracks of recorded music,
 utilizes the intended computer system merely as a support for the information. Such
 claims are directed toward conveying meaning to the human reader rather than towards
 establishing a functional relationship between recorded data and the computer. 
 

 A claim directed to a computer readable medium
 storing instructions or executable code that recites an abstract idea must be
 evaluated for eligibility under 35 U.S.C. 101 . See
 MPEP §
 2106 . 
 

 

 [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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 03/09/2026 20:49:32