2173 Claims Must Particularly Point Out and Distinctly Claim the Invention
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In patent examining parlance, the claim language must be “definite” to comply with 35 U.S.C. 112, second paragraph.
Conversely, a claim that does not comply with this requirement of 35 U.S.C. 112, second paragraph is “indefinite.”
The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent.
A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention.
2173.01 Interpreting the Claims
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I. BROADEST REASONABLE INTERPRETATION
The first step to examining a claim to determine if the language is definite is to fully understand the subject matter of the invention disclosed in the application and to ascertain the boundaries of that subject matter encompassed by the claim.
- During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art.
- Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.
Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification
The best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms.
If an Office action has issued where the plain meaning of the claim terms was used, applicant may point out that the term has been given a special definition.
- Since there is a presumption that claim terms are given their plain meaning, and the use of special definitions is an exception, the applicant must point to where the specification as filed provides a clear and intentional use of a special definition for the claim term to be treated as having a special definition.
An applicant may not add a special definition or disavowal after the filing date of the application.
- However, an applicant may point out or explain in remarks where the specification as filed contains a special definition or disavowal.
II. DETERMINE WHETHER OR NOT EACH CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, sixth paragraph
As part of the claim interpretation analysis, examiners should determine whether each limitation invokes 35 U.S.C. 112, sixth paragraph or not. If the claim limitation invokes 35 U.S.C. 112, sixth paragraph, the claim limitation must “be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof
2173.02 Determining Whether Claim Language is Definite
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Claims under examination are evaluated with a different standard than patented claims to determine whether the language is definite.
A court will not find a patented claim indefinite unless it is ‘‘insolubly ambiguous.’’
- In other words, the validity of a claim will be preserved if some meaning can be gleaned from the language.
- The Office is not required or even permitted to interpret claims when examining patent applications in the same manner as the courts, which, post issuance, operate under the presumption of validity.
During patent application prosecution, the Office must take claims in their broadest sense.
- This helps establish a clear record of what applicant intends to claim.
- A lower threshold of ambiguity is applied during prosecution because the patent record is in development and not fixed.
During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.
- A claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear.
- For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear.
- But a genus claim that could be interpreted in such a way that it is not clear which species are covered would be indefinite-The test for definiteness under 35 U.S.C. 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.
Definiteness of claim language must be analyzed, not in a vacuum, but in light of:
- The content of the particular application disclosure;
- The teachings of the prior art; and
- 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.
Applicants should respond to rejections by explaining that claim language would be recognized by a person of ordinary skill in the art as definite, and that examiners are encouraged to suggestion changes to the claims to improve clarity or precision.
2173.03 Correspondence Between Specification and Claims
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Correspondence between the specification and the claims is a requirement of 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.
Glossaries of terms used in the claims are a helpful device and are a best practice for ensuring adequate definition of terms used in claims.
2173.04 Breadth Is Not Indefiniteness
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If the claim is too broad because it is not supported by the original description or by an enabling disclosure, a rejection under 35 U.S.C. 112, first paragraph, would be appropriate.
If the claim is too broad because it reads on the prior art, a rejection under either 35 U.S.C. 102 or 103 would be appropriate.
A claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear.
A broad claim is not indefinite merely because it encompasses a wide scope if it is clearly defined.
