The Subject Patent Already Has Underlining or ... - Bayhdolecentral
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1850 MANUAL OF PATENT EXAMlNING PROCEDURE<br />
Examples to assist in nnderstanding the interpretation<br />
on the three areas of special concern referred to in<br />
the preceding paragraph are set out below.<br />
C. Combinations of Different Categ<strong>or</strong>ies of<br />
Claims<br />
<strong>The</strong> method f<strong>or</strong> determining unity-of invention<br />
under PCT'Rule 13 shall be construed as permitting,<br />
in particular, the inclusion of anyone ofthe following<br />
combinations of claims of different categ<strong>or</strong>ies in the<br />
same international application:<br />
(A) In addition to an independent claim f<strong>or</strong> a<br />
given product, an independent claim f<strong>or</strong>a process<br />
specially adapted f<strong>or</strong> the manufacture of the said<br />
product, and an independent claim f<strong>or</strong> a use of the<br />
saidproduct.<strong>or</strong><br />
(B) In addition to an independent claim f<strong>or</strong> a<br />
given process, an independent claim f<strong>or</strong> an apparatus<br />
<strong>or</strong> means specifically designed f<strong>or</strong>. carrying out the<br />
said process; <strong>or</strong><br />
(C) In addition to an independent claim f<strong>or</strong> a<br />
given product, an independent claim f<strong>or</strong> a process<br />
specially adapted f<strong>or</strong> the manufacture of the said<br />
product and an independent claim f<strong>or</strong> an apparatus <strong>or</strong><br />
means specifically .designed f<strong>or</strong> carrying out the said<br />
process, it being understood that a process is specially<br />
adapted f<strong>or</strong> the manufacture of a product if it inherently<br />
results in the product and that an apparatus <strong>or</strong><br />
means is specifically designed f<strong>or</strong> carrying out a process<br />
if the contribution over the pri<strong>or</strong> art of the appararus<br />
<strong>or</strong> means c<strong>or</strong>responds to the contribution the<br />
process makes over the pri<strong>or</strong> art.<br />
Thus, a process shall be considered to be specially<br />
adapted f<strong>or</strong> the manufacture of a product if the<br />
claimed process inherently results in the claiined<br />
product with the technical relationship being present<br />
between the claimed product and claimed process,<br />
<strong>The</strong> w<strong>or</strong>ds "specially adapted" are not intended to<br />
imply that the productcould not also be manufactured<br />
by a different' process. '<br />
Also an apparatus <strong>or</strong> means shall be considered to<br />
be specifically designed f<strong>or</strong> carrying out a claimed<br />
process if the contribution over thepri<strong>or</strong>:art of the<br />
appararus <strong>or</strong> means c<strong>or</strong>responds to the contribution<br />
the process makes over the pri<strong>or</strong> art. Consequently, it<br />
would not be sufficient that the appararus <strong>or</strong> means is<br />
merely capable of being used in carrying out the<br />
August2001 1800-62<br />
claiined process. However, the expression specifically<br />
designed does not imply that the apparatus <strong>or</strong><br />
means could not be used f<strong>or</strong> carrying out another process,<br />
n<strong>or</strong> that. the process could not be carried out<br />
using an alternative apparatus <strong>or</strong> means.<br />
D. "Markush Practice"<br />
<strong>The</strong> situation involving the so-called Markush practice<br />
wherein a single claim defines alternatives<br />
(chemical <strong>or</strong> non-chemical) is also governed by PCT<br />
Rule 13.2. In this special situation, the requirement of<br />
a technical interrelationship and the same <strong>or</strong> c<strong>or</strong>responding<br />
special technical features as defined in PCT<br />
Rule 13.2; shall be considered to be met when the<br />
alternatives are of a similar nature.<br />
When the Markush grouping is f<strong>or</strong> alternatives of<br />
chemical compounds, they shall be regarded as being<br />
of a similarnaturewhere the following criteria are<br />
fulfilled:<br />
(A) All alternatives have a common property <strong>or</strong><br />
activity; and<br />
(B)(I)A common structure is present, i.e., a significant<br />
structural element is shared by all of the alternatives..<strong>or</strong><br />
(C)(2)In cases where the common structure cannot<br />
be the unifying criteria, allalternatives belong to a<br />
recognizedclass of chemical compounds in the art to<br />
which the invention pertains.<br />
In paragraph (B)(l), above, the w<strong>or</strong>ds "significant<br />
strucrural element is shared by all of the alternatives"<br />
refer to caseswhere tilecompounds share a common<br />
chemical structure which occupies a large p<strong>or</strong>tion of<br />
their structures, <strong>or</strong> in case the compounds have in<br />
common only a small p<strong>or</strong>tion of their structures, the<br />
commonly shared structure constitutes a structurally<br />
distinctive p<strong>or</strong>tion in view of existing pri<strong>or</strong> art. <strong>The</strong><br />
structural element may be a single component <strong>or</strong> a<br />
combination of individual components linked<br />
together.<br />
In paragraph (C)(2), above, the w<strong>or</strong>ds "recognized<br />
class of chemical compounds" mean that there is an<br />
expectation from the knowledge in the art that members<br />
of the class will behave in the same way in the<br />
context of the claiined invention. In other w<strong>or</strong>ds,<br />
each member could be substituted one f<strong>or</strong> the other,<br />
with the expectation that the same intended result<br />
would be achieved.