Office Action Response Argument
(Indefiniteness under 35 U.S.C. § 112(b))

Summary

This office action response template provides arguments you may use when responding to a rejection of patent claims for indefiniteness under 35 U.S.C. § 112(b). This template includes practical guidance and drafting notes. Use this template in combination with Patent Office Action Response to prepare a complete response to an office action that rejects claims for indefiniteness. For a discussion of rejections under 35 U.S.C. § 112, see Responding to Rejections under 35 U.S.C. § 112. For a template for responding to rejections based on the enablement and written description requirements of 35 U.S.C. § 112, see Office Action Response Argument (Enablement and Written Description Under Section 112(a)). For a template for responding to a rejection based on functional claim language, see Office Action Response Argument (Means-Plus-Function and Indefiniteness under Section 112). 35 U. S. C. § 112(b) requires that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention" (the so-called definiteness requirement). A patent claim is indefinite if, read in light of the patent specification and the prosecution history, it fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (abrogating the Federal Circuit's "insolubly ambiguous" standard for indefiniteness). Most indefiniteness rejections can be addressed relatively easily. Often, it is simply a matter of correcting typographical errors (e.g., changing "the" to "a," or vice versa) to provide proper antecedent basis, or replacing an original term with a clearer equivalent term of the same scope. However, sometimes an examiner's suggested claim amendments, either explicitly laid out or implied, would be unnecessarily limiting, or the claim language you are being asked to correct would be particularly difficult to reword. In such situations, analyze the rejection to determine whether the examiner has presented a properly supported prima facie case of indefiniteness. For example, consider whether the examiner has based the alleged indefiniteness on conclusory statements rather than a reasoned analysis. As with other types of rejections, the examiner must set out an analysis that properly supports an indefiniteness rejection for the rejection to be considered a prima facie rejection. See Manual of Patent Examining Procedure 2173.02.