MPEP 2173.02 – Definite?

Chapter 2100 – Patentability

Chapter 2173.02 – Determining whether claim language is definite

Remember:

FITF – effective filing date

pre-AIA – time invention was made

“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton Energy Servs., Inc v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008)

Whether a claim is indefinite is determined by whether or not a person of ordinary skill in the art would understand what is being claimed when read in light of the specification.

I. Claims under examination vs. patented claims

Claims under prosecution are given broadest reasonable interpretation (BRI).

Patented claims, however, are interpreted based on a fully developed prosecution record.

Claim breadth -> A broad claim is not indefinite merely because it encompasses a wide scope of subject matter.

II. Threshold requirements of clarity and precision

The requirement for definiteness is not a question as to whether or not there are better modes of expression (i.e. better claim language). Examiners are encouraged to make suggestions to improve claim clarity/precision, but should not insist on their own personal preferences..

Claim definiteness is analyzed in light of:

A) The content of the particular application disclosure,

B) The teachings of the prior art, and

C) The claim interpretation that would be given by one of ordinary skill in the art at the time the application was made.

III. Resolving indefinite claim language

A. Establish clear record – Examiners should clearly communicate reasons for finding claims indefinite, establish these reasons on the record (i.e. via Office actions), and provide any findings to support claim indefiniteness rejections.

B. An Office action should provide a sufficient explanation

  • Office actions should identify specific terms/phrases that are deemed indefinite.

C. Provide claim interpretation in Reasons for Allowance when record is unclear

  • Clarification by the examiner may be needed at time of allowance with respect to claim interpretation. The claim interpretation used by the examiner in determining allowability over the prior art may be explained at time of allowance in the reasons for allowance. See MPEP 1302.14.

D. Open lines of communication with the applicant

  • If the sole remaining issue in an application is a claim interpretation issue, it is beneficial for all parties to conduct an interview to resolve all outstanding issues in a timely manner.

 

 

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