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Undue Breadth Rejection Traversal


Sometimes, Examiners reject claims by alleging indefiniteness based on the claims not reciting more limitations. In other words, Examiners may reject claims by alleging that breadth alone gives rise to indefiniteness. However, such rejections are improper on this ground alone (as Mr. Kappos has himself noted), and Applicants may consider addressing the rejection as follows.

Example Argument

Claims X and Y were rejected under 35 U.S.C. § 112, second paragraph as allegedly being indefinite. More specifically, the Office Action stated that the recitation [FEATURE] is indefinite because [REASON]. Applicants respectfully submit that this recitation is definite under the requirements of the second paragraph of 35 U.S.C. § 112.

The rejection appears to be based on the claim not reciting additional limitations alone. In other words, the sole basis for the rejection appears to be that the claim is broad. However, “[b]readth of a claim is not to be equated with indefiniteness. In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971). If the scope of the subject matter embraced by the claims is clear, and if applicants have not otherwise indicated that they intend the invention to be of a scope different from that defined in the claims, then the claims comply with 35 U.S.C. 112, second paragraph”. See MPEP § 2173.04. As such, it is not necessary to enumerate every [FEATURE] that would meet the claim recitations. If such a requirement existed in order to obtain the desired claim scope, Applicants would, in essence, be forced to construct the claim as a Markush group having every desired variant, and no such requirement exists in the MPEP, nor anywhere else under U.S. patent law.

Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.