2100 Patentability

2111.04 Whereby/Wherein clauses (inter alia)

As a suggestion, in relation to Minton v. Nat’l Ass’n of Securities Dealers, Inc, this section could be expanded, if deemed applicable, to include other words with a similar meaning to 'wherein' and 'whereby' which may also be interpreted as merely indicating the intended outcome of a positively-recited method step; e.g., 'thereby,' thereto,' 'therein.' It would also be very helpful, especially for new examiners, to provide specific examples of when these words limit a claim and when they do not limit a claim (merely as examples, and not as per se rules). I believe that providing a more express explanation would help examiners to determine proper claim scope.



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Idea No. 158