Office Actions rejecting claims as being indefinite

Patent claims must follow certain rigid rules in terms of format and language. For this reason, claims will often read like a foreign language because the grammar and structure seem a bit off.

The good news is that, in most cases, indefiniteness under Section 112 may be resolved by a fairly simple response correcting whatever objections raised by the examiner. Here are some of the more common types of rejections under Section 112.

Section 112 rejections are often regarded as “non-substantive” by patent practitioners because they typically relate to the form, and not the substance, of the claims. Correcting a section 112 rejection is fairly straightforward in most cases.

Claiming subject matter not described in the specification

35 USC § 112(a) is often cited to reject certain claimed features that are not disclosed in the specification. Generally, a feature must be shown in the drawing in order to be eligible for claiming [see MPEP § 608.02(d)]. Conventional features that are not essential for a proper understanding of the invention may be illustrated in the figures in the form of a graphical symbol or labeled representation (e.g., a labeled rectangular box).

If the features are insignificant, a less expensive amendment would be to simply remove the objectionable features from the claims. If the significant features were originally disclosed in the written specification, it may be possible to amend the drawings to include a graphical symbol or labeled representation on the grounds that such amended drawings do not add new matter, but simply clarify what was originally discussed in the written specification.

If the features are significant and arguably supported in the specification, an argument may be required to explain why the claimed features were adequately described in the specification.

Keep in mind that amendments should not introduce any new matter. Therefore, applicants must walk a fine line between making certain amendments while avoiding the introduction of new matter.

Lack of antecedent basis

Whenever a noun is first introduced in a claim set, the noun must be preceded by the article “a” or “an” (i.e., indefinite article). When the same noun is then repeated in the same claim or a dependent claim, the noun should then be preceded by the article “the” (i.e., definite article). objections

Unclear claim language

If the examiner is having difficulty understanding what exactly is being claimed, then a rejection may be issued under Section 112(b) along with a request for clarification. In response to such rejections, the applicant may want to clean up the claim language and provide remarks explaining the particular features being claimed.

Occasionally, examiners will specify in the Office Action what they presume a certain claim element to mean. It is incumbent on the applicant to correct any wrong presumptions on the part of the examiner.

Ideally, the claims should recite terms that are found in the specification, particularly in the detailed description of preferred embodiments. It’s not a rigid rule that each claim term must be stated verbatim in the specification so long as the concept is clearly taught. Since examiner may be subjective, it’s best to err on the side of caution and claim features that are expressly identified in the specification whenever possible.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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