MPEP 2173.06 – Compact Prosecution

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:


As mentioned above, clear articulation of each and every rejection (101, 102, etc) should be made in a first action.


If there is uncertainty in a claim (i.e. terms of degree, antecedent basis), best effort by the Office should be made to:

  1. Set forth a 112, 2nd (or b), rejection and explain the claim interpretation being made for prior art rejections.
  2. Set forth prior art rejections based on the explained claim interpretation.




MPEP 2173.05 – 112, 2nd (or b) cheat sheet

Chapter 2100 – Patentability

Chapter 2173.05 – Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

MPEP 2173.05 is a great resource for common examples when determining whether claim language is definite or not. 2173.05 is split into a bunch of smaller sections.

Here’s a snippet of each, a cheat-sheet, if you will:

  1. New Terminology
    1. Meaning of every term should be apparent from prior art or applicant’s spec
    2. Clarity and precision
    3. Terms contrary to their ordinary meaning should be clearly redefined in applicant’s spec
  2. Relative Terminology
    1. Terms of degree – Definite within context of invention
    2. Reference to an object that is variable may render a claim indefinite – claiming “a large printer” is not sufficient. How large?
    3. Approximations – Again, depends on context. Terms like “about,” “essentially,” “similar,” “substantially,” and “type” are all going to raise a red flag and should probably be avoided.
    4. Subjective terms – Better to have an objective standard to determine claim scope
  3. Numerical Ranges and Amounts Limitations
    1. Narrow and broader ranges in the same claim – “a predetermined quantity, for example, the maximum capacity”
    2. Open-ended numerical ranges – “up to”
    3. Effective amount – can a person of ordinary skill determine specific values based on applicant’s spec?
  4. Exemplary Claim Language (“for example” or “such as”) – It is unclear if any limitations after exemplary language should be interpreted as a narrowing limitation.
  5. Lack of Antecedent Basis – lack of clarity within a claim – reciting a term (“the lever” in a claim that contains no earlier recitation (“a lever”)
    1. Examiner should suggest corrections to antecedent problems
    2. A claim term which has no antecedent basis in the disclosure is not necessariliy indefinite
    3. A claim is not per se indefinite if the body of the claim recites additional elements which do not appear in the preamble
  6. Reference to Limitations in Another Claim – “The product produced by the method of claim 1…” is acceptable – Possible 112, 4th (or d), issues.
  7. Functional Limitations – Functional language does not, in and of itself, render a claim improper. See 35 U.S.C. 112, sixth (or f).
  8. Alternative Limitations
    1. Markush groups – “selected from the group consisting of A, B, and C”
    2. “Or” terminology – alternative expressions are acceptable
    3. “Optionally” – “containing A, B, and optionally C” is acceptable
  9. Negative Limitations – so long as the boundaries are definite, negative limitations are OK. Negative limitations should be supported by the specification, for example to exclude alternative elements recited in spec.
  10. Old Combination – the 1952 Patent Act allowed the patentability of old inventions have new and improved elements.
  11. Aggregation – Applicant is entitled to know whether claims are being rejected and under which statutes (i.e. 101, 102, 103, 112).
  12. [Reserved]
  13. Prolix – Long recitations where metes and bounds of the claimed subject matter is indeterminable should be rejected.
  14. Multiplicity – Applicant presents an unreasonable number of claims which are repetitious and multipled.
  15. Double Inclusion – If a claim directed to a device that can be read to include the same element twice, the claim may be indefinite
  16. Claims Directed to Product-By-Process or Product and Process
    1. Product-by-Process – A product claim that defines the claimed product in terms of the process by which it is made, is proper.
    2. Product and process in the same claim – A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
  17. “Use” Claims – attempts to claim a process without setting forth any steps is indefinite. “A process for using…”
  18. Omnibus Claim – “A device substantially as shown and described”
  19. Reference to Figures or Tables – Claims are to be complete themselves and references to Figures/Tables should be avoided, but OK in exceptional circumstances.
  20. Chemical Formula – Formulas should not be considered indefinite unless there is an error in the formula.
  21. Trademarks or Trade Names in a Claim – Depends on how the mark/name is being used. The mark/name may be used to identify a source and not the goods themselves.
  22. Mere Function of Machine – A process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.

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?


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.

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.


(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.


[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.