Chapter 2100 – Patentability
Chapter 2173.06 – Practice Compact Prosecution
The old adage here is the earlier indefiniteness issues are identified in an application during examination, the faster an application can be pushed towards disposal (allowance, abandonment). Claim interpretation and a satisfactory explanation of this interpretation by the patent examiner goes a long way, especially when it comes to an applicant trying to understand prior art rejections made by the Office.
There are two key parts of this section:
I. INTERPRET THE CLAIM AND APPLY ART WITH AN EXPLANATION OF HOW AN INDEFINITE TERM IS INTERPRETED
As mentioned above, clear articulation of each and every rejection (101, 102, etc) should be made in a first action.
II. PRIOR ART REJECTION OF CLAIM REJECTED AS INDEFINITE
If there is uncertainty in a claim (i.e. terms of degree, antecedent basis), best effort by the Office should be made to:
- Set forth a 112, 2nd (or b), rejection and explain the claim interpretation being made for prior art rejections.
- Set forth prior art rejections based on the explained claim interpretation.