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102 rejection, the examiner explained that the claim was anticipated by a mental process augmented by pencil and paper markings In determining the bri, examiners should establish the meaning of each claim term consistent with the specification as it would be interpreted by one of ordinary skill in the art, including identifying and construing functional claim limitations. 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.
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When a claim limitation employs functional language, the examiner’s determination of whether the limitation is sufficiently definite will be highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the art). 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). How can limitations from the specification be properly incorporated into the claims
Incorporating limitations from the specification into the claims should be done carefully to avoid indefiniteness issues
The mpep 2173.03 provides guidance: Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. The fine line between construing claims in light of the specification and improperly importing limitations from the specification represents one of patent law’s most persistent interpretive challenges. Any negative limitation or exclusionary proviso must have basis in the original disclosure
If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. The specification, including any claims, may contain chemical formulas and mathematical equations, but the written description portion of the specification must not contain drawings or flow diagrams. The mpep 2163.05 provides guidance “with respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure.”
