MPEP 2173.04 – Breadth is not indefiniteness

Chapter 2100 – Patentability

Chapter 2173.04 – Breadth is not Indefiniteness

What is claim breadth?

Claim breadth is essentially the scope of the claimed subject matter.

Why might claim breadth cause a question of indefiniteness?

Remember:

35 USC 112, second paragraph/(b), states: “a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention.”

If a broad claim, like a genus claim, covers multiple species, the claim wouldn’t necessarily be considered indefinite, unless it isn’t clear what species are included.

In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) (“Breadth is not indefiniteness.”).  Read it here.

Undue breadth occurs when a claim is just too broad and it is simply unclear what the applicants regard as their invention. Without proper support in the specification, applicant’s specification may be flagged as a non-enabling disclosure and be subject to further rejections, like 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejections. See MPEP 2164.

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