To obtain a valid patent, a patent application as filed must contain a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. This section outlines in explicit detail the requirements and components of the disclosure including the specification, claims, and drawings.

• Review Ed9 10.2019: 608

In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.

Where subject matter not shown in the drawing or described in the description is claimed in the application as filed, and such original claim itself constitutes a clear disclosure of this subject matter, then the claim should be treated on its merits, and requirement made to amend the drawing and description to show this subject matter.

• Review Ed9 10.2019: 608.01(l)

This section outlines in detail the rules of dependent claims including multiple dependent claims. It gives examples of acceptable multiple dependent claims and examples of unacceptable multiple dependent claims. There is also a brief discussion of restriction practice, how multiple dependent claims are handled at the PTO (by both the Technology Center Staff and Examiners).

In addition, this section includes examples of claims that will be objected to and the current practice where each embodiment of each claim must be treated on an individual basis. Also included is a section on calculating fees for multiple dependent claims as well as an example.

The treatment of improper dependent claims is discussed including infringement tests, claim form and arrangement, and rejection and objection.

• Review Ed9 10.2019: 608.01(n)

This section covers amendments and the applicant's action including when an applicant may amend and the manner of making amendments under 37 C.F.R. 1.121. There are many rules governing amendments that are discussed in 37 C.F.R. 1.121 and this section. These consist of amendments to the specification and amendments to the claims including status identifiers, markings to show the changes, claim text, claim numbering, and acceptable alternative status identifiers. In addition, amendments in reexamination proceedings and reissue applications are also discussed.

• Review Ed9 10.2019: 714

This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).

• Review Ed9 10.2019: 2105

Transitional phrases are covered in this section. These include phrases like comprising, consisting essentially of, and consisting of.

• Review Ed9 10.2019: 2111.03

Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.

The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.

• Review Ed9 10.2019: 2113

This section covers obviousness of ranges. It includes a discussion on instances where there is an overlap of ranges, an optimization of ranges, and a rebuttal of prima facie case of obviousness.

• Review Ed9 10.2019: 2144.05

This section covers the written description requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. The essential goal of the written description requirement is to clearly convey that the applicant has invented the subject matter which is claimed.

This section covers further details of the written description as well as signs of an inadequate written description along with amendments. For instance, the written description requires an essential feature in the original claims, the feature must also be described in the specification or claims, and must not be conventional in the art or known to one of ordinary skill in art. A broad generic disclosure is not necessarily a sufficient written description of a specific embodiment, especially where the broad generic disclosure conflicts with the remainder of the disclosure.

• Review Ed9 10.2019: 2163

This section covers the topic of numerical ranges and amounts limitations. Generally, the recitation of specific numerical ranges in a claim does not raise an issue of whether a claim is definite. Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible.

• Review Ed9 10.2019: 2173.05(c)

Examples of claim language which have been held to be indefinite because the intended scope of the claim was unclear are:

• “R is halogen, for example, chlorine”;
• “material such as rock wool or asbestos”;
• “lighter hydrocarbons, such, for example, as the vapors or gas produced”; and
• “normal operating conditions such as while in the container of a proportioner”

The mere use of the phrases “such as” or “for example” does not by itself render a claim indefinite.

• Review Ed9 10.2019: 2173.05(d)

A claim is indefinite when it contains words or phrases whose meaning is unclear. The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.

• Review Ed9 10.2019: 2173.05(e)

This section covers alternative limitations including Markush groups, 'or' terminology, and the use of the term 'optionally'. A Markush claim is commonly formatted as: ‘‘selected from the group consisting of A, B, and C;’’ Alternative expressions using “or” are acceptable, such as “wherein R is A, B, C, or D.” An alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term “optionally.”

• Review Ed9 10.2019: 2173.05(h)

The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation.

• Review Ed9 10.2019: 2173.05(i)

There are many situations where claims are permissively drafted to include a reference to more than one statutory class of invention.

• Review Ed9 10.2019: 2173.05(p)

Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112, second paragraph. This section discusses 'use' claims.

• Review Ed9 10.2019: 2173.05(q)