MPEP 706.03(d)
Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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706.03(d)    Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph [R-08.2017]

Rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, are discussed in MPEP §§ 2171 - 2174 and 2181, subsection II. Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.19, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

¶ 7.30.02    Statement of Statutory Basis, 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, Second Paragraph

The following is a quotation of 35 U.S.C. 112(b):

(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.

The following is a quotation of pre-AIA 35 U.S.C. 112, 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.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.

2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

¶ 7.34    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Inventor’s Invention

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, the inventor or a joint inventor, or for pre-AIA the applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This paragraph is to be used only where inventor or applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s).

3. In bracket 3, identify the submission by inventor or applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.

4. In bracket 4, set forth what inventor or applicant has stated in the submission to indicate a different invention.

5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.

¶ 7.34.01    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite)

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.11, as applicable. If none of these form paragraphs are appropriate, a full explanation of the deficiency of the claims should be supplied. Whenever possible, identify the particular term(s) or limitation(s) which render the claim(s) indefinite and state why such term or limitation renders the claim indefinite. If the scope of the claimed subject matter can be determined by one having ordinary skill in the art, a rejection using this form paragraph would not be appropriate. See MPEP §§ 2171 - 2174 for guidance. See also form paragraph 7.34.15 for pro se applicants.

¶ 7.34.02    Terminology Used Inconsistent with Accepted Meaning

Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term "[1]" in claim [2] is used by the claim to mean "[3]," while the accepted meaning is "[4]." The term is indefinite because the specification does not clearly redefine the term.

Examiner Note:

1. In bracket 3, point out the meaning that is assigned to the term by applicant’s claims, taking into account the entire disclosure.

2. In bracket 4, point out the accepted meaning of the term. Support for the examiner’s stated accepted meaning should be provided through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP § 2173.05(a).

3. This paragraph must be preceded by form paragraph 7.34.01.

4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.

¶ 7.34.03    Relative Term - Term of Degree Rendering Claim Indefinite

The term "[1]" in claim [2] is a relative term which renders the claim indefinite. The term "[1]" is not defined by 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. [3]

Examiner Note:

1. In bracket 3, explain which parameter, quantity, or other limitation in the claim has been rendered indefinite by the use of the term appearing in bracket 1.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.04    Broader Range/Limitation And Narrow Range/Limitation in Same Claim

A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim [1] recites the broad recitation [2], and the claim also recites [3] which is the narrower statement of the range/limitation.

Examiner Note:

1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.05    Lack of Antecedent Basis in the Claims

Claim [1] recites the limitation [2] in [3]. There is insufficient antecedent basis for this limitation in the claim.

Examiner Note:

1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--.

2. In bracket 3, identify where in the claim(s) the limitation appears, for example, --line 3--, --the 3rd paragraph of the claim--, --the last 2 lines of the claim--, etc.

3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the claim indeterminate. It must be preceded by form paragraph 7.34.01.

¶ 7.34.07    Claims Are a Literal Translation

The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.08    Indefinite Claim Language: "For Example"

Regarding claim [1], the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.09    Indefinite Claim Language: "Or The Like"

Regarding claim [1], the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.10    Indefinite Claim Language: "Such As"

Regarding claim [1], the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.11    Modifier of "Means" Lacks Function

Claim [1] uses the word "means" or a generic placeholder as a substitute for "means" and is preceded by the word(s) "[2]." It is unclear whether these words convey function or structure. A limitation construed under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph must not recite the structure for performing the function. Since no clear function is specified by the word(s) preceding "means," it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).

Examiner Note:

1. This paragraph should be used when words precede the term "means" or a substitute for "means" and it cannot be determined from the specification whether those words connote function or structure. Therefore, it is unclear whether the presumption is rebutted that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is being invoked. If the claim element recites structure for performing the function, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph will not be invoked. It is necessary for the words which precede "means" to convey a function to be performed and not recite structure to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.12    Essential Steps Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the steps omitted from the claims.

3. Give the rationale for considering the omitted steps critical or essential.

¶ 7.34.13    Essential Elements Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the elements omitted from the claims.

3. Give the rationale for considering the omitted elements critical or essential.

¶ 7.34.14    Essential Cooperative Relationships Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims.

3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential.

¶ 7.34.15    Rejection Under 35 U.S.C. 112, Pro Se

Claim [1] rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.

¶ 7.34.16     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

The claim limitation " [1] " uses the phrase "means for" or "step for" or a generic placeholder coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].

If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase "means for" or "step for" or the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.

If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph

Examiner Note:

1.    In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

2.    In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.)

3.   This form paragraph may be used when the phrase "means for" or "step for" is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.

4.   This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.17     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Applicant Asserts that Claim Limitation Is Invoking 35 U.S.C. 112(f) or pre-AIA 35 US.C. 112, Sixth Paragraph, but the Phrase "Means for" or "Step for" Is Not Used

Applicant asserts that the claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because [2].  If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:

(a)     Amend the claim to include the phrase "means for" or "step for". The phrase "means for" or "step for" must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or

(b)     Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

1.   This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, even though the phrase "means for" or "step for" is not used in the claim limitation. See MPEP § 707.07(a) for guidance on when the second action may be made final.

2.   In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

3.   In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.

4.   This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.18     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]

Applicant may:

(a)     Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b)     Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a) ).

If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:

(a)     Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or

(b)     Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.

Examiner Note:

1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.

2. In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.

3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.19     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Fails To Clearly Link or Associate the Disclosed Structure, Material, or Acts to the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. [2]

Applicant may:

(a)     Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b)     Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or

(c)     State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.175(d) and MPEP §§ 608.01(o) and 2181.

Examiner Note:

1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

2. In bracket 2, explain why the written description of the specification fails to clearly link or associate the structure, material, or acts to the claimed function.

3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.35    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim - Omnibus Claim

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. Use this paragraph to reject an "omnibus" type claim. No further explanation is necessary.

3. See MPEP § 1302.04(b) for cancellation of such a claim by examiner’s amendment upon allowance.

4. An example of an omnibus claim is: "A device substantially as shown and described."

¶ 7.35.01    Trademark or Trade Name as a Limitation in the Claim

Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.

Examiner Note:

1. In bracket 2, insert the trademark/trade name and where it is used in the claim.

2. In bracket 3, specify the material or product which is identified or described in the claim by the trademark/trade name.