USC 112 2nd; USC 112 (b) Indefiniteness



The Office rejected Claims XX – XX under 35 USC 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. A §112 second paragraph rejection has two separate requirements, indefiniteness and failing to claim what applicant regards as the invention.  With respect to indefiniteness, the "essential inquiry pertaining to this requirement is whether the claims set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity.  Definiteness of claim language must be analyzed, not in a vacuum, but in light of (1) the content of the particular disclosure, (2) the teachings of the prior art, and (3) the claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made."  (MPEP §2173.02).

A rejection stating that the claims fail to set forth the subject matter that the applicant regards as the invention is only appropriate where the applicant has stated that the invention is something different from what is defined by the claims (MPEP §2172(a)).   There is a presumption that the claims describe the applicant's invention, absent evidence to the contrary

Paragraph XX rejects claim X as being indefinite because it contains the functional term “XXX”.  The Office’s focus during examination for compliance the requirement for definiteness of 112 (second paragraph) is whether the claim meets the threshold requirements of clarity and precision, not whether more suitable language or modes of expression are available.  The essential inquiry pertaining to a rejection under 112 (second paragraph) is whether the claims set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity.  MPEP 2173.02.  This is an objective standard because it is not dependent on the views of applicant or any particular individual, but is evaluated in the context of whether the claim is definite – i.e., whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent part.  MPEP 2171.  In other words, 112 (second paragraph) generally requires that the “claims, read in light of the specifications, reasonably apprise those skilled in the art ….of…