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Indefiniteness Rejection Traversal


There are times that addressing a 35 U.S.C. § 112, second paragraph, rejection for alleged indefiniteness by using an Examiner's suggested claim amendments is unnecessarily limiting, or the claim language is particularly difficult to reword in a more clear manner. In such scenarios, it may be advisable to analyze the rejection to determine whether the Examiner has presented a prima facie rejection. For instance, it may be advisable to ascertain whether the Examiner has merely asserted conclusory statements and accepted the alleged indefiniteness as fact. If this is the case, it may be advisable to traverse the rejection based on a failure to set forth a prima facie rejection to encourage the Examiner to rethink and clarify, if not withdraw, the rejection. An example of such a traversal is provided below.

Example Argument

The Office Action rejected claims X and Y under the second paragraph of 35 U.S.C. § 112 as allegedly being indefinite. Specifically, the Office Action alleged that [ASSERTION OF INDEFINITENESS HERE], without providing any reasoning. Applicants respectfully traverse the rejection as follows.

MPEP § 2173.02 states, in part, that “[t]he 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 claims is not to be analyzed in a vacuum, but rather in light of:

  • (A) The content of the particular application disclosure;
  • (B) The teachings of the prior art; and
  • (C) 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.

(Id.). “The test for definiteness under the second paragraph of 35 U.S.C. § 112 is whether ‘those skilled in the art would understand what is claimed when the claim is read in light of the specification.’ Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986)” (Id.).

In the present case, the Office Action has not asserted, let alone established, why the claimed features are believed to be indefinite from the perspective of one of ordinary skill in the art. As such, the Office Action failed to make a prima facie rejection of the claims under the second paragraph of 35 U.S.C. § 112. Further, Applicants respectfully submit that the claims are indeed definite at least because [FACT-SPECIFIC ARGUMENTS HERE].

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it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.