Relative Terms
Under U.S. patent law, relative terms (such as "about" and "substantially") are not indefinite merely because they are relative. Rather, acceptability of the claim language depends on whether a person of
ordinary skill in the art would understand what is claimed in light of the specification. In the case that a relative term provides broader coverage and is reasonably
supported by the specification, such as “sufficient” as used in this example, it may be helpful to argue along the lines of the following.
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On page [NUMBER] of the Office Action, the Examiner rejected claim X under 35 U.S.C. § 112, second paragraph, as allegedly being indefinite. Specifically, the Office
Action asserted that “[t]he term ‘sufficient’ in claim X is a relative term which renders the claim indefinite. The term ‘sufficient’ is not defined in the claim, the
specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of
the invention.” Applicants respectfully traverse the rejection.
MPEP § 2173.05(b) states:
The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112, second paragraph.
Seattle Box Co., v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984). Acceptability of the claim language depends on whether
one of ordinary skill in the art would understand what is claimed, in light of the specification.
MPEP § 2173.05(b) further states:
When a term of degree is presented in a claim, first a determination is to be made as to whether the specification provides some standard for measuring that degree.
If it does not, [which is not admitted] a determination is made as to whether one of ordinary skill in the art, in view of the prior art and the status of
the art, would be nevertheless reasonably apprised of the scope of the invention.
(Emphasis added.) In the present case, claim X recites that “said first widget is located in sufficient proximity to said second widget so as to perform a useful
operation.” As such, the recitation does not merely recite that the first widget is in sufficient proximity to the second widget without context. Rather, the claim
goes on to recite that the first widget is located in sufficient proximity to the second widget so as to perform the useful operation. Applicant
respectfully submits that a person of ordinary skill in the art would readily understand, based upon the device at hand, how close a first widget would have to be
to a second widget so as to perform the useful operation. Because a person of ordinary skill in the art would readily appreciate the scope of the claimed invention,
Applicant respectfully submits that the rejection of claim X is improper.
Accordingly, it is respectfully submitted that the rejection is overcome, and respectfully requested that the rejection be withdrawn.