This section outlines the abstract of the disclosure which includes the title and the abstract. These should be provided so a reader can quickly determine what was invented. It should only be a summary and the abstract should contain a maximum of 150 words, not exceeding 15 lines of text.

• Review Ed9 10.2019: 608.01(b)

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 addresses rules for the form of claims. For example, the claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. Many other claim form rules are covered here.

• Review Ed9 10.2019: 608.01(m)

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)

Claims must be given their broadest reasonable interpretation in light of the specification. Due to the fact that the 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.

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 time of the invention.

• Review Ed9 10.2019: 2111

The definition of plain meaning is covered in this section. Plan meaning refers to the ordinary and customary meaning given to the term by those with ordinary skill in the art.

• Review Ed9 10.2019: 2111.01

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 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 includes a discussion on how to determine whether claim language is definite. During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. A decision on whether a claim is indefinite under 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.

• Review Ed9 10.2019: 2173.02

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)

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)

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)