MPEP Q & A 12: Two Separate and Distinct Requirements for 35 U.S.C. 112(b)

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Question:

What are the two separate and distinct requirements of 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph?

Answer:

35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph contains two separate and distinct requirements:

  • The first one is that the claim(s) set forth the subject matter applicants regard as the invention, and
  • The second one is that the claim(s) particularly point out and distinctly claim the invention.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2171 of the MPEP.  The following is a brief summary of section 2171.

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

This section covers the two separate requirements for claims under the second paragraph or paragraph (b) of 35 U.S.C. 112. These requirements include that the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention; and the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.

 

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