Overcoming §112 ¶ 2 Rejection

the original post comes from: http://www.patenthawk.com/blog/2005/07/overcoming_112_2_rejection.html

35 U.S.C. §112 ¶ 2: "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."

Process/method claim rejections may be off-base if the rejection complaint is that the claimed method is not enabling, or even that the claimed method is not self-sufficiently comprehensible.

Case law makes clear that claim language is not an exercise in story-telling of enablement, but instead a definite statement of the legal bounds of a claim. The specification must be enabling; the claims need not.

"The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant. A claim is not `indefinite' simply because it is hard to understand when viewed without benefit of the specification." S3 Inc. v. nVIDIA Corp„ 259 F.3d 1364, 1369, 59 USPQ2d 1745 (Fed. Cir. 2001)

"A claim is not defective when it states fewer than all of the steps that may be performed in practice of an invention." Smith & Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304, 1311, 61 USPQ2d 1065 (Fed. Cir. 2001).

We have stated the standard for assessing whether a patent claim is sufficiently definite to satisfy the statutory requirement as follows: If one skilled in the art would understand the bounds of the claim when read in light of the specification, then the claim satisfies section 112 paragraph 2." Exxon Research & Engineering Co. v. United States, 265 F.3d 1371, 1375, 60 USPQ2d 1272 (Fed. Cir. 2001).

That said, if rejected for §112 ¶ 2 in a non-final office action, rewrite the claim language. There is long-standing case law precedence that "questions of indefiniteness on margin should be resolved against an applicant." (Chisom on Patents §8.03[3][b][i]).

"Words in claims are to be given 'there broadest reasonable interpretation consistent with the specification where the patent has not yet issued and the applicant has an opportunity to change them.'" Wiggins, 488 F.2d 538, 541-542, 179 USPQ 421, 423 (CCPA 1973)

"That said, if rejected for §112 ¶ 2 in a non-final office action, rewrite the claim language."

I could not disagree more. You just laid out some strong case law supporting NOT amending. The Examiner must provide some evidence of indefiniteness. I repeatedly receive rejections for "omitting essential steps" or a demand that I recite, in a method claim, a preliminary step of "providing" some type of structure referred to in another claim step. I refuse to add a step that simply (and redundantly) announces the existence of some object, simply because the Examiner has confused conventions for clarity of apparatus claims with clarity of method claims. I refuse to respond with an amendment to an examiner's complaint that claim langauge is too vague or unclear because there are too many potential embodiments covered or too many ways to accomplish what I'm doing. That is breadth, not indefiniteness. If something is clearly broad, as the examiner has apparently found as a matter of record, the scope is clear and the scope is broad--it is not UNclear.

The rejections I see are not questions of indefiniteness "on the margin." What examiners may be too reluctant or inexperienced to do is attack broad language for lack of enablement or lack of written description. What I suspect examiners also want is to be provided with more keywords to make a search easier--this has nothing to do with indefiniteness of language.