112(2) Compliance

35 U.S.C. §112 Paragraph 2 compliance

Two Step Test

Step I.

Give the claim the broadest reasonable interpretation (BRI) consistent with the specification as it would be interpreted by one of ordinary skill in the art.

Step II.

Determining Whether Claim Language Is Definite

  • Terms of Degree
  • Subjective Terms
  • Claims Must Find Clear Support in the Specification
  • Rejections Under §112, ¶4 for Improper Dependent Claims
  • Functional Claiming
  • Means-Plus-Function Claim Limitations and Other Non-Structural Claim Terms that Invoke §112, ¶6
  • Supplemental Information for Examining Computer-Implemented Functional Claim Limitations
  • Markush Claims

Step III.  Compact Prosecution Procedures for Resolving §112 Issues

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