MPEP 2173 – Distinctiveness matters!

Chapter 2100 – Patentability

Chapter 2173 – Claims Must Particularly Point Out and Distinctly Claim the Invention

This week, let’s walk through Chapter 2173 of the MPEP. 35 USC 112, second paragraph, rejections can affectionately be described as “low hanging fruit” when it comes to rejections made by the Patent Office. Think indefiniteness, terms of degree, approximation, or antecedent basis (or lack thereof), among others.

35 USC 112(b) or pre-AIA 35 USC 112, second paragraph, requires that a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the application regards as his or her invention. What this essentially means is that the scope and boundaries of the claims should be clear in view of the filed specification.

Generally, 112 rejections can be easily overcome by argument and/or minor amendment, or via Examiner’s Amendment. In a perfect world, the Office will provide clear guidance (See MPEP 2173.02(II)) as to how an indefiniteness rejection may be overcome.  Claim definiteness ensures that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent.

35 U.S.C. 112 SPECIFICATION.

(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

35 U.S.C. 112 (PRE‑AIA) SPECIFICATION.

[second paragraph] The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

 

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