The invention of interest is a system comprised of methods and a collection of tangible measurement device & electronic data collection systems. I was advised to avoid mixing: the structure specification of the invention and a step in a process in the same claim.

Is there a specific guidance from the USPTO or in 35 USC? or is the guidance that one learns through experience/best practice? I pose this question because if it is the former, then I would like to read the guidance so that my claims will conform to USPTO or other authoritative expectations.

  • United States code hardly ever provides guidance just law.
    – A. K.
    Aug 7, 2018 at 13:05

1 Answer 1


May read https://www.uspto.gov/web/offices/pac/mpep/s2106.html for guidance.

Seems interpretation of

i.first sentence of 2106 - I "the claimed invention must be to one of the four statutory categories" and

ii. of 2106.03 - II last paragraph first line "If a claim is clearly not within one of the four categories (Step 1: NO), then a rejection under 35 U.S.C. 101 must be made indicating that the claim is directed to non-statutory subject matter." leads to practice of not mixing the cited two in your question 'in the same claim'

However, system and method can be claimed in two separate independent claims in the same application.

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