Editing MPEP 2173

<noinclude>{{MPEP Section|2172|2100|2174 }}</noinclude>

==[[MPEP 2173|2173 Claims Must Particularly Point Out and Distinctly Claim the Invention]]==

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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 Claim Terminology===

A fundamental principle contained in 35 U.S.C. 
112, second paragraph is that applicants are their own 
lexicographers. They can define in the claims what 
they regard as their invention essentially in whatever 
terms they choose so long as any special meaning 
assigned to a term is clearly set forth in the specification. 
See MPEP § 2111.01. Applicant may use functional 
language, alternative expressions, negative 
limitations, or any style of expression or format of 
claim which makes clear the boundaries of the subject 
matter for which protection is sought.

===2173.02 Clarity and Precision===

The examiner’s focus during examination of claims 
for compliance with the requirement for definiteness 
of 35 U.S.C. 112, second paragraph, is whether the 
claim meets the threshold requirements of clarity and 
precision, not whether more suitable language or 
modes of expression are available.

The 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 claim language 
must be analyzed, not in a vacuum, but in light of:

{{tab1}}(A) The content of the particular application disclosure;</p>

{{tab1}}(B) The teachings of the prior art; and</p>

{{tab1}}(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.</p>

In reviewing a claim for compliance with 35 U.S.C. 
112, second paragraph, the examiner must consider 
the claim as a whole to determine whether the claim 
apprises one of ordinary skill in the art of its scope 
and, therefore, serves the notice function required by 
35 U.S.C. 112, second paragraph, by providing clear 
warning to others as to what constitutes infringement 
of the patent.

See, Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366, 71 USPQ2d 1081, 1089 (Fed. Cir. 2004) 
("The requirement to 'distinctly' claim means that the 
claim must have a meaning discernible to one of ordinary 
skill in the art when construed according to correct 
principles. Only when a claim remains 
insolubly ambiguous without a discernible meaning 
after all reasonable attempts at construction must a 
court declare it indefinite.").

Accordingly, a claim term that is not used or 
defined in the specification is not indefinite if the 
meaning of the claim term is discernible.

If the language of the claim is such that a person of 
ordinary skill in the art could not interpret the metes 
and bounds of the claim so as to understand how to 
avoid infringement, a rejection of the claim under 
35 U.S.C. 112, second paragraph, would be appropriate. 

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." 
''Orthokinetics, Inc. v. Safety Travel Chairs, Inc.'', 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).

===2173.03 Inconsistency Between Claim and Specification Disclosure or Prior Art===

Although the terms of a claim may appear to be 
definite, inconsistency with the specification disclosure 
or prior art teachings may make an otherwise 
definite claim take on an unreasonable degree of 
uncertainty. In re Cohn, 438 F.2d 989, 169 USPQ 95 
(CCPA 1971); In re Hammack, 427 F.2d 1378, 
166 
USPQ 204 (CCPA 1970). In Cohn, the claim was 
directed to a process of treating a surface with a corroding 
solution until the metallic appearance is supplanted 
by an “opaque” appearance. Noting that no 
claim may be read apart from and independent of the 
supporting disclosure on which it is based, the court 
found that the description, definitions and examples 
set forth in the specification relating to the appearance 
of the surface after treatment were inherently inconsistent 
and rendered the claim indefinite.

===2173.04 Breadth Is Not Indefiniteness===

Breadth 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.

Undue breadth of the claim may be addressed under 
different statutory provisions, depending on the reasons 
for concluding that the claim is too broad. If the 
claim is too broad because it does not set forth that 
which applicants regard as their invention as evidenced 
by statements outside of the application as 
filed, a rejection under 35 U.S.C. 112, second paragraph, 
would be appropriate. 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 103would be appropriate. 

===2173.05 Specific Topics Related to Issues Under 35 U.S.C. 112, Second Paragraph===

The following sections are devoted to a discussion 
of specific topics where issues under 35 U.S.C. 112, 
second paragraph, have been addressed. These sections 
are not intended to be an exhaustive list of the 
issues that can arise under 35 U.S.C. 112, second 
paragraph, but are intended to provide guidance in 
areas that have been addressed with some frequency 
in recent examination practice. The court and Board 
decisions cited are representative. As with all appellate 
decisions, the results are largely dictated by the 
facts in each case. The use of the same language in a 
different context may justify a different result.

See MPEP § 2181 for guidance in 
determining 
whether an applicant has complied with 
the requirements of 35 U.S.C. 112, second paragraph, 
when 35 
U.S.C. 112, sixth paragraph, is invoked.

====2173.05(a) New Terminology====

======I. THE MEANING OF EVERY TERM SHOULD BE APPARENT======

The meaning of every term used in a claim should 
be apparent from the prior art or from the specification 
and drawings at the time the application is filed. 
Applicants need not confine themselves to the terminology 
used in the prior art, but are required to make 
clear and precise the terms that are used to define the 
invention whereby the metes and bounds of the 
claimed invention can be ascertained. During patent 
examination, the pending claims must be given the 
broadest reasonable interpretation consistent with the 
specification. In re Morris, 127 F.3d 1048, 1054, 
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Prater, 
415 F.2d 1393, 162 USPQ 541 (CCPA 1969). See also 
MPEP § 2111 - § 2111.01. When the specification 
states the meaning that a term in the claim is intended 
to have, the claim is examined using that meaning, in 
order to achieve a complete exploration of the applicant’s 
invention and its relation to the prior art. In re 
Zletz, 893 F.2d 319, 13 
USPQ2d 1320 (Fed. Cir. 
1989).

======II. THE REQUIREMENT FOR CLARITY AND PRECISION MUST BE BALANCED WITH THE LIMITATIONS OF THE LANGUAGE======

Courts have recognized that it is not only permissible, 
but often desirable, to use new terms that are frequently 
more precise in describing and defining the 
new invention. In re Fisher, 427 F.2d 833, 166 USPQ 
18 (CCPA 1970). Although it is difficult to compare 
the claimed invention with the prior art when new 
terms are used that do not appear in the prior art, this 
does not make the new terms indefinite. 

New terms are often used when a new technology is 
in its infancy or is rapidly evolving. The requirements 
for clarity and precision must be balanced with the 
limitations of the language and the science. If the 
claims, read in light of the specification, reasonably 
apprise those skilled in the art both of the utilization 
and scope of the invention, and if the language is as 
precise as the subject matter permits, the statute 
(35 
U.S.C. 112, second paragraph) demands no more. 
Shatterproof Glass Corp. v. Libbey Owens Ford Co., 
758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) (interpretation 
of “freely supporting” in method claims 
directed to treatment of a glass sheet); Hybritech, Inc. 
v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 
USPQ 81 (Fed. Cir. 1986) (interpretation of a limitation 
specifying a numerical value for antibody affinity 
where the method of calculation was known in the art 
at the time of filing to be imprecise). This does not 
mean that the examiner must accept the best effort of 
applicant. If the proposed language is not considered 
as precise as the subject matter permits, the examiner 
should provide reasons to support the conclusion of 
indefiniteness and is encouraged to suggest alternatives 
that are free from objection.

======III. TERMS USED CONTRARY TO THEIR ORDINARY MEANING MUST BE CLEARLY REDEFINED IN THE WRITTEN DESCRIPTION======

Consistent with the well-established axiom in 
patent law that a patentee or applicant is free to be his 
or her own lexicographer, a patentee or applicant may 
use terms in a manner contrary to or inconsistent with 
one or more of their ordinary meanings if the written 
description clearly redefines the terms. See, e.g., Process 
Control Corp. v. HydReclaim Corp., 190 F.3d 
1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999) 
(“While we have held many times that a patentee can 
act as his own lexicographer to specifically define 
terms of a claim contrary to their ordinary meaning,” 
in such a situation the written description must clearly 
redefine a claim term “so as to put a reasonable competitor 
or one reasonably skilled in the art on notice 
that the patentee intended to so redefine that claim 
term.”); Hormone Research Foundation Inc. v.
Genentech Inc., 904 F.2d 1558, 15 
USPQ2d 1039 
(Fed. Cir. 1990). Accordingly, when there is more 
than one definition for a term, it is incumbent upon 
applicant to make clear which definition is being 
relied upon to claim the invention. Until the meaning 
of a term or phrase used in a claim is clear, a rejection 
under 35 U.S.C. 112, second paragraph is appropriate. 
In applying the prior art, the claims should be construed 
to encompass all definitions that are consistent 
with applicant’s use of the term. See Tex. Digital Sys., 
Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202, 64 
USPQ2d 1812, 1818 (Fed. Cir. 2002). It is appropriate 
to compare the meaning of terms given in technical 
dictionaries in order to ascertain the accepted meaning 
of a term in the art. In re Barr, 444 F.2d 588, 170 
USPQ 330 (CCPA 1971). See also MPEP 
§ 2111.01.

====2173.05(b) Relative Terminology====

The fact that claim language, including terms of 
degree, may not be precise, does not automatically 
render the claim indefinite under 35 U.S.C. 112, second 
paragraph. Seattle Box Co., v. Industrial Crating 
& Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. 
Cir. 1984). Acceptability of the claim language 
depends on whether one of ordinary skill in the art 
would understand what is claimed, in light of the 
specification.

WHEN A TERM OF DEGREE IS PRESENT, DETERMINE 
WHETHER A STANDARD IS DISCLOSED 
OR WHETHER ONE OF ORDINARY 
SKILL IN THE ART WOULD BE APPRISED OF 
THE SCOPE OF THE CLAIM

When a term of degree is presented in a claim, first 
a determination is to be made as to whether the specification 
provides some standard for measuring that 
degree. If it does not, a determination is made as to 
whether one of ordinary skill in the art, in view of the 
prior art and the status of the art, would be nevertheless 
reasonably apprised of the scope of the invention. 
Even if the specification uses the same term of degree 
as in the claim, a rejection may be proper if the scope 
of the term is not understood when read in light of the 
specification. While, as a general proposition, broadening 
modifiers are standard tools in claim drafting in 
order to avoid reliance on the doctrine of equivalents 
in infringement actions, when the scope of the claim 
is unclear a rejection under 35 U.S.C. 112, second 
paragraph, is proper. See In re Wiggins, 488 F. 2d 538, 
541, 179 USPQ 421, 423 (CCPA 1973).

When relative terms are used in claims wherein the 
improvement over the prior art rests entirely upon size 
or weight of an element in a combination of elements, 
the adequacy of the disclosure of a standard is of 
greater criticality.

REFERENCE TO AN OBJECT THAT IS VARIABLE 
MAY RENDER A CLAIM INDEFINITE

A claim may be rendered indefinite by reference to 
an object that is variable. For example, the Board has 
held that a limitation in a claim to a bicycle that 
recited “said front and rear wheels so spaced as to 
give a wheelbase that is between 58 percent and 75 
percent of the height of the rider that the bicycle was 
designed for” was indefinite because the relationship 
of parts was not based on any known standard for sizing 
a bicycle to a rider, but on a rider of unspecified 
build. Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. 
App. & Inter. 1989). On the other hand, a claim limitation 
specifying that a certain part of a pediatric 
wheelchair be “so dimensioned as to be insertable 
through the space between the doorframe of an automobile 
and one of the seats” was held to be definite. 
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 
806 
F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986). The 
court stated that the phrase “so dimensioned” is as 
accurate as the subject matter permits, noting that the 
patent law does not require that all possible lengths 
corresponding to the spaces in hundreds of different 
automobiles be listed in the patent, let alone that they 
be listed in the claims.

A.“About”

The term “about” used to define the area of the 
lower end of a mold as between 25 to about 45% of 
the mold entrance was held to be clear, but flexible. 
Ex parte Eastwood, 163 USPQ 316 (Bd. App. 1968). 
Similarly, in W.L. Gore & Associates, Inc. v. Garlock, 
Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), 
the court held that a limitation defining the stretch rate 
of a plastic as “exceeding about 10% per second” is 
definite because infringement could clearly be 
assessed through the use of a stopwatch. However, the 
court held that claims reciting “at least about” were 
invalid for indefiniteness where there was close prior 
art and there was nothing in the specification, prosecution 
history, or the prior art to provide any indication 
as to what range of specific activity is covered by 
the term “about.” Amgen, Inc. v. Chugai Pharmaceutical 
Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 
1991).

B.“Essentially”

The phrase “a silicon dioxide source that is essentially 
free of alkali metal” was held to be definite 
because the specification contained guidelines and 
examples that were considered sufficient to enable a 
person of ordinary skill in the art to draw a line 
between unavoidable impurities in starting materials 
and essential ingredients. In re Marosi, 710 F.2d 799, 
218 USPQ 289 (CCPA 1983). The court further 
observed that it would be impractical to require applicants 
to specify a particular number as a cutoff 
between their invention and the prior art.

C.“Similar”

The term “similar” in the preamble of a claim that 
was directed to a nozzle “for high-pressure cleaning 
units or similar apparatus” was held to be indefinite 
since it was not clear what applicant intended to cover 
by the recitation “similar” apparatus. Ex parte Kristensen, 
10 USPQ2d 1701 (Bd. Pat. App. & Inter. 
1989).

A claim in a design patent application which read: 
“The ornamental design for a feed bunk or similar 
structure as shown and described.” was held to be 
indefinite because it was unclear from the specification 
what applicant intended to cover by the recitation 
of “similar structure.” Ex parte Pappas, 23 USPQ2d 
1636 (Bd. Pat. App. & Inter. 1992).

D.“Substantially”

The term “substantially” is often used in conjunction 
with another term to describe a particular characteristic 
of the claimed invention. It is a broad term. In 
re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 
1960). The court held that the limitation “to substantially 
increase the efficiency of the compound as a 
copper extractant” was definite in view of the general 
guidelines contained in the specification. In re Mattison, 
509 F.2d 563, 184 USPQ 484 (CCPA 1975). The 
court held that the limitation “which produces substantially 
equal E and H plane illumination patterns” 
was definite because one of ordinary skill in the art 
would know what was meant by “substantially equal.” 
Andrew Corp. v. Gabriel Electronics, 847 F.2d 819, 
6 
USPQ2d 2010 (Fed. Cir. 1988).

E.“Type”

The addition of the word “type” to an otherwise 
definite expression (e.g., Friedel-Crafts catalyst) 
extends the scope of the expression so as to render it 
indefinite. Ex parte Copenhaver, 109 USPQ 118 
(Bd. App. 1955). Likewise, the phrase “ZSM-5-type 
aluminosilicate zeolites” was held to be indefinite 
because it was unclear what “type” was intended to 
convey. The interpretation was made more difficult by 
the fact that the zeolites defined in the dependent 
claims were not within the genus of the type of zeolites 
defined in the independent claim. Ex parte Attig, 
7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).

F.Other Terms

The phrases “relatively shallow,” “of the order of,” 
“the order of about 5mm,” and “substantial portion” 
were held to be indefinite because the specification 
lacked some standard for measuring the degree 
intended and, therefore, properly rejected as indefinite 
under 35 U.S.C. 112, second paragraph. Ex parte Oetiker, 
23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992). 

The term “or like material” in the context of the 
limitation “coke, brick, or like material” was held to 
render the claim indefinite since it was not clear how 
the materials other than coke or brick had to resemble 
the two specified materials to satisfy the limitations of 
the claim. Ex parte Caldwell, 1906 C.D. 58 (Comm’r 
Pat. 1906).

The terms “comparable” and “superior” were held 
to be indefinite in the context of a limitation relating 
the characteristics of the claimed material to other 
materials - “properties that are superior to those 
obtained with comparable” prior art materials. Ex 
parte Anderson, 21 USPQ2d 1241 (Bd. Pat. App. & 
Inter. 1991). It was not clear from the specification 
which properties had to be compared and how comparable 
the properties would have to be to determine 
infringement issues. Further, there was no guidance as 
to the meaning of the term “superior.”

The phrase “aesthetically pleasing” was held 
indefinite because the meaning of a term cannot 
depend on the unrestrained, subjective opinion of the 
person practicing the invention. Datamize LLC v. 
Plumtree Software, Inc., 417 F.3d 1342, 1347-48, 75 
USPQ2d 1801, 1807 (Fed. Cir. 2005).

====2173.05(c) Numerical Ranges and AmountsLimitations====

Generally, the recitation of specific numerical 
ranges in a claim does not raise an issue of whether a 
claim is definite.

I.NARROW AND BROADER RANGES IN 
THE SAME CLAIM

Use of a narrow numerical range that falls within a 
broader range in the same claim may render the claim 
indefinite when the boundaries of the claim are not 
discernible. Description of examples and preferences 
is properly set forth in the specification rather than in 
a single claim. A narrower range or preferred embodiment 
may also be set forth in another independent 
claim or in a dependent claim. If stated in a single 
claim, examples and preferences lead to confusion 
over the intended scope of the claim. In those 
instances where it is not clear whether the claimed 
narrower range is a limitation, a rejection under 35 
U.S.C. 112, second paragraph should be made. The 
Examiner should analyze whether the metes and 
bounds of the claim are clearly set forth. Examples of 
claim language which have been held to be indefinite 
are (A) “a temperature of between 45 and 78 degrees 
Celsius, preferably between 50 and 60 degrees Celsius”; 
and (B) “a predetermined quantity, for example, 
the maximum capacity.”

While a single claim that includes both a broad and 
a narrower range may be indefinite, it is not improper 
under 35 U.S.C. 112, second paragraph, to present a 
dependent claim that sets forth a narrower range for 
an element than the range set forth in the claim from 
which it depends. For example, if claim 1 reads “A 
circuit … wherein the resistance is 70-150 ohms.” and 
claim 2 reads “The circuit of claim 1 wherein the 
resistance is 70-100 ohms.”, then claim 2 should not 
be rejected as indefinite. 

II.OPEN-ENDED NUMERICAL RANGES

Open-ended numerical ranges should be carefully 
analyzed for definiteness. For example, when an independent 
claim recites a composition comprising “at 
least 20% sodium” and a dependent claim sets forth 
specific amounts of nonsodium ingredients which add 
up to 100%, apparently to the exclusion of sodium, 
an 
ambiguity is created with regard to the “at least” 
limitation (unless the percentages of the nonsodium 
ingredients are based on the weight of the nonsodium 
ingredients). On the other hand, the court held 
that 
a 
composition claimed to have a theoretical content 
greater than 100% (i.e., 20-80% of A, 20-80% 
of 
B  
and 1-25% of C) was not indefinite simply 
because the claims may be read in theory to include 
compositions that are impossible in fact to formulate. 
It was observed that subject matter which cannot exist 
in fact can neither anticipate nor infringe a claim. In reKroekel, 504 F.2d 1143, 183 USPQ 610 (CCPA 1974).

In a claim directed to a chemical reaction process, a 
limitation required that the amount of one ingredient 
in the reaction mixture should “be maintained at less 
than 7 mole percent” based on the amount of another 
ingredient. The examiner argued that the claim was 
indefinite because the limitation sets only a maximum 
amount and is inclusive of substantially no ingredient 
resulting in termination of any reaction. The court did 
not agree because the claim was clearly directed to a 
reaction process which did not warrant distorting the 
overall meaning of the claim to preclude performing 
the claimed process. In re Kirsch, 498 F.2d 1389, 
182 
USPQ 286 (CCPA 1974).

Some terms have been determined to have the following 
meanings in the factual situations of the 
reported cases: the term “up to” includes zero as a 
lower limit, In re Mochel, 470 F.2d 638, 176 USPQ 
194 (CCPA 1974); and “a moisture content of not 
more than 70% by weight” reads on dry material, Ex 
parte Khusid, 174 USPQ 59 (Bd. App. 1971).

III.“EFFECTIVE AMOUNT”

The common phrase “an effective amount” may or 
may not be indefinite. The proper test is whether or 
not one skilled in the art could determine specific values 
for the amount based on the disclosure. See In reMattison, 509 F.2d 563, 184 USPQ 484 (CCPA 1975). 
The phrase “an effective amount . . . for growth stimulation” 
was held to be definite where the amount was 
not critical and those skilled in the art would be able 
to determine from the written disclosure, including 
the examples, what an effective amount is. In re Halleck, 
422 F.2d 911, 164 USPQ 647 (CCPA 1970). The 
phrase “an effective amount” has been held to be 
indefinite when the claim fails to state the function 
which is to be achieved and more than one effect can 
be implied from the specification or the relevant art. 

In re Fredericksen 213 F.2d 547, 102 USPQ 
35 
(CCPA 1954). The more recent cases have tended 
to accept a limitation such as “an effective amount” as 
being definite when read in light of the supporting 
disclosure and in the absence of any prior art which 
would give rise to uncertainty about the scope of the 
claim. In Ex parte Skuballa, 12 USPQ2d 1570 (Bd. 
Pat. App. & Inter. 1989), the Board held that a pharmaceutical 
composition claim which recited an 
“effective amount of a compound of claim 1” without 
stating the function to be achieved was definite, particularly 
when read in light of the supporting disclosure 
which provided guidelines as to the intended 
utilities and how the uses could be effected.

====2173.05(d) Exemplary Claim Language ("for example," "such as")====

Description of examples or preferences is properly 
set forth in the specification rather than the claims. If 
stated in the claims, examples and preferences may
lead to confusion over the intended scope of a claim. 
In those instances where it is not clear whether the 
claimed narrower range is a limitation, a rejection 
under 35 U.S.C. 112, second paragraph should be 
made. The examiner should analyze whether the 
metes and bounds of the claim are clearly set forth. 
Examples of claim language which have been held to 
be indefinite because the intended scope of the claim 
was unclear are: 

(A)“R is halogen, for example, chlorine”; 

(B)“material such as rock wool or asbestos” Ex 
parte Hall, 83 USPQ 38 (Bd. App. 1949); 

(C)“lighter hydrocarbons, such, for example, as 
the vapors or gas produced” Ex parte Hasche, 86 
USPQ 481 (Bd. App. 1949); and 

(D)“normal operating conditions such as while in 
the container of a proportioner” Ex parte Steigerwald, 
131 USPQ 74 (Bd. App. 1961).

The above examples of claim language which 
have been held to be indefinite are fact specific and 
should not be applied as per se rules. See MPEP 
§
2173.02 for guidance regarding when it is appropriate 
to make a rejection under 35 U.S.C. 112, second 
paragraph.

====2173.05(e) Lack of Antecedent Basis====

A claim is indefinite when it contains words or 
phrases whose meaning is unclear. The lack of clarity 
could arise where a claim refers to “said lever” or “the 
lever,” where the claim contains no earlier recitation 
or limitation of a lever and where it would be unclear 
as to what element the limitation was making reference. 
Similarly, if two different levers are recited earlier 
in the claim, the recitation of “said lever” in the 
same or subsequent claim would be unclear where it 
is uncertain which of the two levers was intended. 
A 
claim which refers to “said aluminum lever,” 
but 
recites only “a lever” earlier in the claim, is indefinite 
because it is uncertain as to the lever to which 
reference is made. Obviously, however, the failure to 
provide explicit antecedent basis for terms does not 
always render a claim indefinite. If the scope of a 
claim would be reasonably ascertainable by those 
skilled in the art, then the claim is not indefinite. 
Energizer Holdings Inc. v. Int’l Trade Comm’n, 435 
F.3d 1366, 77 USPQ2d 1625 (Fed. Cir. 2006)(holding 
that “anode gel” provided by implication the antecedent 
basis for “zinc anode”); Ex parte Porter, 25 
USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992) 
(“controlled stream of fluid” provided reasonable 
antecedent basis for “the controlled fluid”). Inherent 
components of elements recited have antecedent basis 
in the recitation of the components themselves. For 
example, the limitation “the outer surface of said 
sphere” would not require an antecedent recitation 
that the sphere has an outer surface. See Bose Corp. v. 
JBL, Inc., 274 F.3d 1354, 1359, 61 USPQ2d 1216, 
1218-19 (Fed. Cir 2001) (holding that recitation of 
“an ellipse” provided antecedent basis for “an ellipse 
having a major diameter” because “[t]here can be no 
dispute that mathematically an inherent characteristic 
of an ellipse is a major diameter”).

EXAMINER SHOULD SUGGEST CORRECTIONS 
TO ANTECEDENT PROBLEMS

Antecedent problems in the claims are typically 
drafting oversights that are easily corrected once they 
are brought to the attention of applicant. The examiner’s 
task of making sure the claim language complies 
with the requirements of the statute should be 
carried out in a positive and constructive way, 
so 
that 
minor problems can be identified and easily 
corrected, and so that the major effort is expended on 
more substantive issues. However, even though indefiniteness 
in claim language is of semantic origin, it is 
not rendered unobjectionable simply because it could 
have been corrected. In re Hammack, 427 F.2d 1384 
n.5, 166 USPQ 209 n.5 (CCPA 1970).

A CLAIM TERM WHICH HAS NO ANTECEDENT 
BASIS IN THE DISCLOSURE IS NOT 
NECESSARILY INDEFINITE

The mere fact that a term or phrase used in the 
claim has no antecedent basis in the specification disclosure 
does not mean, necessarily, that the term or 
phrase is indefinite. There is no requirement that the 
words in the claim must match those used in the specification 
disclosure. Applicants are given a great deal 
of latitude in how they choose to define their invention 
so long as the terms and phrases used define the 
invention with a reasonable degree of clarity and precision. 

A CLAIM IS NOT PER SE INDEFINITE IF THE 
BODY OF THE CLAIM RECITES ADDITIONAL 
ELEMENTS WHICH DO NOT APPEAR IN 
THE PREAMBLE

The mere fact that the body of a claim recites additional 
elements which do not appear in the claim’s 
preamble does not render the claim indefinite under 
35 U.S.C. 112, second paragraph. See In re Larsen, 
No. 01-1092 (Fed. Cir. May 9, 2001) (unpublished) 
(The preamble of the Larsen claim recited only a 
hanger and a loop but the body of the claim positively 
recited a linear member. The examiner rejected the 
claim under 35 U.S.C. 112, second paragraph, 
because the omission from the claim’s preamble of a 
critical element (i.e., a linear member) renders that 
claim indefinite. The court reversed the examiner’s 
rejection and stated that the totality of all the limitations 
of the claim and their interaction with each other 
must be considered to ascertain the inventor’s contribution 
to the art. Upon review of the claim in its 
entirety, the court concluded that the claim at issue 
apprises one of ordinary skill in the art of its scope 
and, therefore, serves the notice function required by 
35 U.S.C. 112, paragraph 2.). 

====2173.05(f) Reference to Limitations in Another Claim====

A claim which makes reference to a preceding 
claim to define a limitation is an acceptable claim 
construction which should not necessarily be rejected 
as improper or confusing under 35 U.S.C. 112, second 
paragraph. For example, claims which read: “The 
product produced by the method of claim 1.” or “A 
method of producing ethanol comprising contacting 
amylose with the culture of claim 1 under the following 
conditions .....” are not indefinite under 35 U.S.C. 
112, second paragraph, merely because of the reference 
to another claim. See also Ex parte Porter, 
25 
USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) where 
reference to “the nozzle of claim 7” in a method claim 
was held to comply with 35 U.S.C. 112, second paragraph. 
However, where the format of making reference 
to limitations recited in another claim results in 
confusion, then a rejection would be proper under 
35 
U.S.C. 112, second paragraph. 

====2173.05(g) Functional Limitations====

A functional limitation is an attempt to define 
something by what it does, rather than by what it is 
(e.g., as evidenced by its specific structure or specific 
ingredients). There is nothing inherently wrong with 
defining some part of an invention in functional 
terms. Functional language does not, in and of itself, 
render a claim improper. In re Swinehart, 439 F.2d 
210, 169 USPQ 226 (CCPA 1971). 

A functional limitation must be evaluated and considered, 
just like any other limitation of the claim, for 
what it fairly conveys to a person of ordinary skill in 
the pertinent art in the context in which it is used. A 
functional limitation is often used in association with 
an element, ingredient, or step of a process to define a 
particular capability or purpose that is served by the 
recited element, ingredient or step. In Innova/Pure 
Water Inc. v. Safari Water Filtration Sys. Inc., 
381 
F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 
(Fed. Cir. 2004), the court noted that the claim term 
“operatively connected” is “a general descriptive 
claim term frequently used in patent drafting to reflect 
a functional relationship between claimed components,” 
that is, the term “means the claimed components 
must be connected in a way to perform a 
designated function.” “In the absence of modifiers, 
general descriptive terms are typically construed as 
having their full meaning.” Id. at 1118, 72 USPQ2d at 
1006. In the patent claim at issue, “subject to any 
clear and unmistakable disavowal of claim scope, the 
term ‘operatively connected’ takes the full breath of 
its ordinary meaning, i.e., ‘said tube [is] operatively 
connected to said cap’ when the tube and cap are 
arranged in a manner capable of performing the function 
of filtering.” Id. at 1120, 72 USPQ2d at 1008.

Whether or not the functional limitation complies 
with 35 
U.S.C. 112, second paragraph, is a different 
issue from whether the limitation is properly supported 
under 35 
U.S.C. 112, first paragraph, or is distinguished 
over the prior art. A few examples are set 
forth below to illustrate situations where the issue of 
whether a functional limitation complies with 
35 
U.S.C. 112, second paragraph, was considered.

It was held that the limitation used to define a radical 
on a chemical compound as “incapable of forming 
a dye with said oxidizing developing agent” although 
functional, was perfectly acceptable because it set 
definite boundaries on the patent protection sought. In 
re Barr, 444 F.2d 588, 170 USPQ 33 (CCPA 1971).

In a claim that was directed to a kit of component 
parts capable of being assembled, the Court held that 
limitations such as “members adapted to be positioned” 
and “portions . . . being resiliently dilatable 
whereby said housing may be slidably positioned” 
serve to precisely define present structural attributes 
of interrelated component parts of the claimed assembly. 
In re Venezia, 530 F.2d 956, 189 USPQ 149 
(CCPA 1976).

====2173.05(h) Alternative Limitations====

I.MARKUSH GROUPS

Alternative expressions are permitted if they 
present no uncertainty or ambiguity with respect to 
the question of scope or clarity of the claims. One 
acceptable form of alternative expression, which is 
commonly referred to as a Markush group, recites 
members as being “selected from the group consisting 
of A, B and C.” See Ex parte Markush, 1925 C.D. 126 
(Comm’r Pat. 1925). 

Ex parte Markush sanctions claiming a genus 
expressed as a group consisting of certain specified 
materials. Inventions in metallurgy, refractories, 
ceramics, pharmacy, pharmacology and biology are 
most frequently claimed under the Markush formula 
but purely mechanical features or process steps may 
also be claimed by using the Markush style of claiming. 
See Ex parte Head, 214 USPQ 551 (Bd. App. 
1981); In re Gaubert, 524 F.2d 1222, 187 USPQ 664 
(CCPA 1975); and In re Harnisch, 631 F.2d 716, 206 
USPQ 300 (CCPA 1980). It is improper to use the 
term “comprising” instead of “consisting of.” Ex 
parte Dotter, 12 USPQ 382 (Bd. App. 1931).

The use of Markush claims of diminishing scope 
should not, in itself, be considered a sufficient basis 
for objection to or rejection of claims. However, if 
such a practice renders the claims indefinite or if it 
results in undue multiplicity, an appropriate rejection 
should be made.

Similarly, the double inclusion of an element by 
members of a Markush group is not, in itself, sufficient 
basis for objection to or rejection of claims. 
Rather, the facts in each case must be evaluated to 
determine whether or not the multiple inclusion of 
one or more elements in a claim renders that claim 
indefinite. The mere fact that a compound may be 
embraced by more than one member of a Markush 
group recited in the claim does not necessarily render 
the scope of the claim unclear. For example, the 
Markush group, “selected from the group consisting 
of amino, halogen, nitro, chloro and alkyl” should be 
acceptable even though “halogen” is generic to 
“chloro.” 

The materials set forth in the Markush group ordinarily 
must belong to a recognized physical or chemical 
class or to an art-recognized class. However, when 
the Markush group occurs in a claim reciting a process 
or a combination (not a single compound), it is 
sufficient if the members of the group are disclosed in 
the specification to possess at least one property in 
common which is mainly responsible for their function 
in the claimed relationship, and it is clear from 
their very nature or from the prior art that all of them 
possess this property. While in the past the test for 
Markush-type claims was applied as liberally as possible, 
present practice which holds that claims reciting 
Markush groups are not generic claims (MPEP § 803) 
may subject the groups to a more stringent test for 
propriety of the recited members. Where a Markush 
expression is applied only to a portion of a chemical 
compound, the propriety of the grouping is determined 
by a consideration of the compound as a whole, 
and does not depend on there being a community of 
properties in the members of the Markush expression.

When materials recited in a claim are so related as 
to constitute a proper Markush group, they may be 
recited in the conventional manner, or alternatively. 
For example, if “wherein R is a material selected from 
the group consisting of A, B, C and D” is a proper 
limitation, then “wherein R is A, B, C or D” shall also 
be considered proper. 

Subgenus Claim

Genus, subgenus, and Markush-type claims, if 
properly supported by the disclosure, are all acceptable 
ways for applicants to claim their inventions. 
They provide different ways to present claims of different 
scope. Examiners should therefore not reject 
Markush-type claims merely because there are genus 
claims that encompass the Markush-type claims.

See also MPEP § 608.01(p) and § 715.03.

See MPEP § 803.02 for restriction practice re 
Markush-type claims. 

II.“OR” TERMINOLOGY

Alternative expressions using “or” are acceptable, 
such as “wherein R is A, B, C, or D.” The following 
phrases were each held to be acceptable and not in 
violation of 35 
U.S.C. 112, second paragraph in In reGaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA 
1975): “made entirely or in part of”; “at least one 
piece”; and “iron, steel or any other magnetic material.” 

III.“OPTIONALLY”

An alternative format which requires some analysis 
before concluding whether or not the language is 
indefinite involves the use of the term “optionally.” In 
Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & 
Inter. 1989) the language “containing A, B, and 
optionally C” was considered acceptable alternative 
language because there was no ambiguity as to which 
alternatives are covered by the claim. A similar holding 
was reached with regard to the term “optionally” 
in Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat. App. & 
Inter. 1989). In the instance where the list of potential 
alternatives can vary and ambiguity arises, then it is 
proper to make a rejection under 35 U.S.C. 112, second 
paragraph, and explain why there is confusion.

====2173.05(i) Negative Limitations====

The current view of the courts is that there is nothing 
inherently ambiguous or uncertain about a negative 
limitation. So long as the boundaries of the patent 
protection sought are set forth definitely, albeit negatively, 
the claim complies with the requirements of 
35 U.S.C. 112, second paragraph. Some older cases 
were critical of negative limitations because they 
tended to define the invention in terms of what it was 
not, rather than pointing out the invention. Thus, the 
court observed that the limitation “R is an alkenyl radical 
other than 2-butenyl and 2,4-pentadienyl” was a 
negative limitation that rendered the claim indefinite 
because it was an attempt to claim the invention by 
excluding what the inventors did not invent rather 
than distinctly and particularly pointing out what they 
did invent. In re Schechter, 205 F.2d 185, 98 USPQ 
144 (CCPA 1953).

A claim which recited the limitation “said 
homopolymer being free from the proteins, soaps, resins, 
and sugars present in natural Hevea rubber” in 
order to exclude the characteristics of the prior art 
product, was considered definite because each recited 
limitation was definite. In re Wakefield, 422 F.2d 897, 
899, 904, 164 USPQ 636, 638, 641 (CCPA 1970). In 
addition, the court found that the negative limitation 
“incapable of forming a dye with said oxidized developing 
agent” was definite because the boundaries of 
the patent protection sought were clear. In re Barr, 
444 F.2d 588, 170 USPQ 330 (CCPA 1971).

Any negative limitation or exclusionary proviso 
must have basis in the original disclosure. If alternative 
elements are positively recited in the specification, 
they may be explicitly excluded in the claims. 
See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 
187, 196 (CCPA 1977) (“[the] specification, having 
described the whole, necessarily described the part 
remaining.”). See also Ex parte Grasselli, 231 USPQ 
393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. 
Cir. 1984). The mere absence of a positive recitation 
is not basis for an exclusion. Any claim containing a 
negative limitation which does not have basis in the 
original disclosure should be rejected under 35 U.S.C. 
112, first paragraph, as failing to comply with the 
written description requirement. Note that a lack of 
literal basis in the specification for a negative limitation 
may not be sufficient to establish a prima faciecase for lack of descriptive support. Ex parte Parks, 
30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). 
See MPEP § 2163 - § 2163.07(b) for a discussion of 
the written description requirement of 35 U.S.C. 112, 
first paragraph.

====2173.05(j) Old Combination====

A CLAIM SHOULD NOT BE REJECTED ON 
THE GROUND OF OLD COMBINATION

With the passage of the 1952 Patent Act, the courts 
and the Board have taken the view that a rejection 
based on the principle of old combination is NO 
LONGER VALID. Claims should be considered 
proper so long as they comply with the provisions of 
35 U.S.C. 112, second paragraph. 

A rejection on the basis of old combination was 
based on the principle applied in Lincoln Engineering 
Co. v. Stewart-Warner Corp., 303 U.S. 545, 37 USPQ 
1 (1938). The principle was that an inventor who 
made an improvement or contribution to but one element 
of a generally old combination, should not be 
able to obtain a patent on the entire combination 
including the new and improved element. A rejection 
required the citation of a single reference which 
broadly disclosed a combination of the claimed elements 
functionally cooperating in substantially the 
same manner to produce substantially the same results 
as that of the claimed combination. The case of In reHall, 208 F.2d 370, 100 USPQ 46 (CCPA 1953) illustrates 
an application of this principle.

The court pointed out in In re Bernhardt, 417 F.2d 
1395, 163 USPQ 611 (CCPA 1969) that the statutory 
language (particularly point out and distinctly claim) 
is the only proper basis for an old combination rejection, 
and in applying the rejection, that language 
determines what an applicant has a right and obligation 
to do. A majority opinion of the Board of Appeals 
held that Congress removed the underlying rationale 
of Lincoln Engineering in the 1952 Patent Act, and 
thereby effectively legislated that decision out of 
existence. Ex parte Barber, 187 USPQ 244 (Bd. App. 
1974). Finally, the Court of Appeals for the Federal 
Circuit, in Radio Steel and Mfg. Co. v. MTD Products, 
Inc., 731 F.2d 840, 221 USPQ 657 (Fed. Cir. 1984), 
followed the Bernhardt case, and ruled that a claim 
was not invalid under Lincoln Engineering because 
the claim complied with the requirements of 
35 
U.S.C. 112, second paragraph. Accordingly, a 
claim should not be rejected on the ground of old 
combination.

====2173.05(k) Aggregation====

A claim should not be rejected on the ground of 
“aggregation.” In re Gustafson, 331 F.2d 905, 141 
USPQ 585 (CCPA 1964) (an applicant is entitled to 
know whether the claims are being rejected under 
35 
U.S.C. 101, 102, 103, or 112); In re Collier, 
397 
F.2d 1003, 1006, 158 USPQ 266, 268 (CCPA 
1968) (“[A] rejection for ‘aggregation’ is non-statutory.”).


If a claim omits essential matter or fails to interrelate 
essential elements of the invention as defined by 
applicant(s) in the specification, see MPEP 
§ 2172.01.

====2173.05(m) Prolix====

Examiners should reject claims as prolix only 
when 
they contain such long recitations or unimportant 
details that the scope of the claimed invention is 
rendered indefinite thereby. Claims are rejected as 
prolix when they contain long recitations that the 
metes and bounds of the claimed subject matter cannot 
be determined.

====2173.05(n) Multiplicity====

{{Statute|37 CFR 1.75. Claim(s).}}
(a)The specification must conclude with a claim particularly 
pointing out and distinctly claiming the subject matter which 
the applicant regards as his invention or discovery.

(b)More than one claim may be presented provided they differ 
substantially from each other and are not unduly multiplied.
|}


Where, in view of the nature and scope of applicant’s 
invention, applicant presents an unreasonable 
number of claims which  are repetitious and multiplied, 
the net result of which is to confuse rather than 
to clarify, a rejection on undue multiplicity based on 
35 U.S.C. 112, second paragraph, may be appropriate. 
As noted by the court in In re Chandler, 319 F.2d 211, 
225, 138 USPQ 138, 148 (CCPA 1963), “applicants 
should be allowed reasonable latitude in stating their 
claims in regard to number and phraseology 
employed. The right of applicants to freedom of 
choice in selecting phraseology which truly points out 
and defines their inventions should not be abridged. 
Such latitude, however, should not be extended to 
sanction that degree of repetition and multiplicity 
which beclouds definition in a maze of confusion. The 
rule of reason should be practiced and applied on the 
basis of the relevant facts and circumstances in each 
individual case.” See also In re Flint, 411 F.2d 1353, 
1357, 162 USPQ 228, 231 (CCPA 1969). Undue multiplicity 
rejections based on 35 U.S.C. 112, second 
paragraph, should be applied judiciously and should 
be rare. 

If an undue multiplicity rejection under 35 U.S.C. 
112, second paragraph, is appropriate, the examiner 
should contact applicant by telephone explaining that 
the claims are unduly multiplied and will be rejected 
under 35 U.S.C. 112, second paragraph. Note MPEP § 
408. The examiner should also request that applicant 
select a specified number of claims for purpose of 
examination. If applicant is willing to select, by telephone, 
the claims for examination, an undue multiplicity 
rejection on all the claims based on 35 U.S.C. 
112, second paragraph, should be made in the next 
Office action along with an action on the merits on the 
selected claims. If applicant refuses to comply with 
the telephone request, an undue multiplicity rejection 
of all the claims based on 35 U.S.C. 112, second paragraph, 
should be made in the next Office action. 
Applicant’s reply must include a selection of claims 
for purpose of examination, the number of which may 
not be greater than the number specified by the examiner. 
In response to applicant’s reply, if the examiner 
adheres to the undue multiplicity rejection, it should 
be repeated and the selected claims will be examined 
on the merits. This procedure preserves applicant’s 
right to have the rejection on undue multiplicity 
reviewed by the Board of Patent Appeals and Interferences. 

Also, it is possible to reject one claim on an 
allowed claim if they differ only by subject matter old 
in the art. This ground of rejection is set forth in Ex 
parte Whitelaw, 1915 C.D. 18, 219 O.G. 1237 
(Comm’r Pat. 1914). The Ex parte Whitelaw doctrine 
is restricted to cases where the claims are unduly multiplied 
or are substantial duplicates. Ex parte Kochan, 
131 USPQ 204, 206 (Bd. App. 1961).

====2173.05(o) Double Inclusion====

There is no per se rule that “double inclusion” is 
improper in a claim. In re Kelly, 305 F.2d 909, 916, 
134 USPQ 397, 402 (CCPA 1962) (“Automatic reliance 
upon a ‘rule against double inclusion’ will lead 
to as many unreasonable interpretations as will automatic 
reliance upon a ‘rule allowing double inclusion’. 
The governing consideration is not double 
inclusion, but rather is what is a reasonable construction 
of the language of the claims.”). Older cases, 
such as Ex parte White, 759 O.G. 783 (Bd. App. 1958) 
and Ex parte Clark, 174 USPQ 40 (Bd. App. 1971) 
should be applied with care, according to the facts of 
each case.

The facts in each case must be evaluated to determine 
whether or not the multiple inclusion of one or 
more elements in a claim gives rise to indefiniteness 
in that claim. The mere fact that a compound may be 
embraced by more than one member of a Markush 
group recited in the claim does not lead to any uncertainty 
as to the scope of that claim for either examination 
or infringement purposes. On the other hand, 
where a claim directed to a device can be read to 
include the same element twice, the claim may be 
indefinite. Ex parte Kristensen, 10 USPQ2d 1701 
(Bd. Pat. App. & Inter. 1989).

====2173.05(p) Claim Directed to Product-By-Process or Product and Process====

There are many situations where claims are permissively 
drafted to include a reference to more than one 
statutory class of invention. 

I.PRODUCT-BY-PROCESS

A product-by-process claim, which is a product 
claim that defines the claimed product in terms of the 
process by which it is made, is proper. In re Luck, 476 
F.2d 650, 177 USPQ 523 (CCPA 1973); In re Pilkington, 
411 F.2d 1345, 162 USPQ 145 (CCPA 1969); In 
re Steppan, 394 F.2d 1013, 156 USPQ 143 (CCPA 
1967). A claim to a device, apparatus, manufacture, or 
composition of matter may contain a reference to the 
process in which it is intended to be used without 
being objectionable under 35 
U.S.C. 112, second 
paragraph, so long as it is clear that the claim is 
directed to the product and not the process.

An applicant may present claims of varying scope 
even if it is necessary to describe the claimed product 
in product-by-process terms. Ex parte Pantzer, 176 
USPQ 141 (Bd. App. 1972).

II.PRODUCT AND PROCESS IN THE SAME 
CLAIM

A single claim which claims both an apparatus and 
the method steps of using the apparatus is indefinite 
under 35 
U.S.C. 112, second paragraph. IPXL 
Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 
77 USPQ2d 1140, 1145 (Fed. Cir. 2005); Ex parteLyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) 
( claim directed to an automatic transmission 
workstand and the method  of using it  held 
ambiguous and properly rejected under 35 U.S.C. 
112, second paragraph).

Such claims may also be rejected under 
35 U.S.C. 101 based on the theory that the claim is 
directed to neither a “process” nor a “machine,” but 
rather embraces or overlaps two different statutory 
classes of invention set forth in 35 
U.S.C. 101 which 
is drafted so as to set forth the statutory classes of 
invention in the alternative only. Id. at 1551. 

====2173.05(q) "Use" Claims====

Attempts to claim a process without setting forth 
any steps involved in the process generally raises an 
issue of indefiniteness under 35 U.S.C. 112, second 
paragraph. For example, a claim which read: “A process 
for using monoclonal antibodies of claim 4 to 
isolate and purify human fibroblast interferon.” was 
held to be indefinite because it merely recites a use 
without any active, positive steps delimiting how this 
use is actually practiced. Ex parte Erlich, 3 USPQ2d 
1011 (Bd. Pat. App. & Inter. 1986). 

Other decisions suggest that a more appropriate 
basis for this type of rejection is 35 U.S.C. 101. In Ex 
parte Dunki, 153 USPQ 678 (Bd. App. 1967), the 
Board held the following claim to be an improper definition 
of a process: “The use of a high carbon austenitic 
iron alloy having a proportion of free carbon as a 
vehicle brake part subject to stress by sliding friction.” 
In Clinical Products Ltd. v. Brenner, 255 F. 
Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district 
court held the following claim was definite, but that it 
was not a proper process claim under 35 U.S.C. 101: 
“The use of a sustained release therapeutic agent in 
the body of ephedrine absorbed upon polystyrene sulfonic 
acid.” 

Although a claim should be interpreted in light of 
the specification disclosure, it is generally considered 
improper to read limitations contained in the specification 
into the claims. See In re Prater, 415 F.2d 
1393, 162 USPQ 541 (CCPA 1969) and In re 
Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 
1975), which discuss the premise that one cannot rely 
on the specification to impart limitations to the claim 
that are not recited in the claim. 

A “USE” CLAIM SHOULD BE REJECTED 
UNDER ALTERNATIVE GROUNDS BASED ON 
35 U.S.C 101 AND 112

In view of the split of authority as discussed above, 
the most appropriate course of action would be to 
reject a “use” claim under alternative grounds based 
on 35 U.S.C. 101 and 112.

BOARD HELD STEP OF “UTILIZING” WAS 
NOT INDEFINITE

It is often difficult to draw a fine line between 
what 
is permissible, and what is objectionable from 
the perspective of whether a claim is definite. In the 
case of Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. 
App. & Inter. 1992), the Board held that a claim 
which clearly recited the step of “utilizing” was not 
indefinite under 35 U.S.C. 112, second paragraph. 
(Claim was to “A method for unloading nonpacked, 
nonbridging and packed, bridging flowable particle 
catalyst and bead material from the opened end of a 
reactor tube which comprises utilizing the nozzle of 
claim 7.”).

====2173.05(r) Omnibus Claim====

Some applications are filed with an omnibus claim 
which reads as follows: A device substantially as 
shown and described. This claim should be rejected 
under 35 
U.S.C. 112, second paragraph, because it is 
indefinite in that it fails to point out what is included 
or excluded by the claim language. See Ex parte Fressola, 
27 USPQ2d 1608 (Bd. Pat. App. & Inter. 1993), 
for a discussion of the history of omnibus claims and 
an explanation of why omnibus claims do not comply 
with the requirements of 35 U.S.C. 112, second paragraph.

Such a claim can be rejected using Form Paragraph 
7.35. See MPEP § 706.03(d). 

For cancellation of such a claim by examiner’s 
amendment, see MPEP § 1302.04(b).

====2173.05(s) Reference to Figures or Tables====

Where possible, claims are to be complete in themselves. 
Incorporation by reference to a specific figure 
or table “is permitted only in exceptional circumstances 
where there is no practical way to define the 
invention in words and where it is more concise to 
incorporate by reference than duplicating a drawing or 
table into the claim. Incorporation by reference is a 
necessity doctrine, not for applicant’s convenience.” 
Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. 
App. & Inter. 1993) (citations omitted). 

Reference characters corresponding to elements 
recited in the detailed description and the drawings 
may be used in conjunction with the recitation of the 
same element or group of elements in the claims. See 
MPEP § 608.01(m).

====2173.05(t) Chemical Formula====

Claims to chemical compounds and compositions 
containing chemical compounds often use formulas 
that depict the chemical structure of the compound. 
These structures should not be considered indefinite 
nor speculative in the absence of evidence that the 
assigned formula is in error. The absence of corroborating 
spectroscopic or other data cannot be the basis 
for finding the structure indefinite. See Ex parte Morton, 
134 USPQ 407 (Bd. App. 1961), and Ex parteSobin, 139 USPQ 528 (Bd. App. 1962). 

A claim to a chemical compound is not indefinite 
merely because a structure is not presented or because 
a partial structure is presented. For example, the claim 
language at issue in In re Fisher, 427 F.2d 833, 
166 
USPQ 18 (CCPA 1970) referred to a chemical 
compound as a “polypeptide of at least 24 amino 
acids having the following sequence.” A rejection 
under 35 U.S.C. 112, second paragraph, for failure to 
identify the entire structure was reversed and the court 
held: “While the absence of such a limitation obviously 
broadens the claim and raises questions of sufficiency 
of disclosure, it does not render the claim 
indefinite.” Chemical compounds may be claimed by 
a name that adequately describes the material to one 
skilled in the art. See Martin v. Johnson, 454 F.2d 746, 
172 USPQ 391 (CCPA 1972). A compound of 
unknown structure may be claimed by a combination 
of physical and chemical characteristics. See Ex parteBrian, 118 
USPQ 242 (Bd. App. 1958). A compound 
may also be claimed in terms of the process by which 
it is made without raising an issue of indefiniteness. 

====2173.05(u) Trademarks or Trade Names in a Claim=====

The presence of a trademark or trade name in a 
claim is not, per se, improper under 35 U.S.C. 112, 
second paragraph, but the claim should be carefully 
analyzed to determine how the mark or name is used 
in the claim. It is important to recognize that 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. 
See definitions of trademark and trade name in MPEP 
§ 608.01(v). A list of some trademarks is found in 
Appendix I.

If the 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 the 35 U.S.C. 112, second paragraph. 
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. In fact, the value of a 
trademark would be lost to the extent that it became 
descriptive of a product, rather than used as an identification 
of a source or origin of a product. Thus, the 
use of a trademark or trade name in a claim to identify 
or describe a material or product would not only render 
a claim indefinite, but would also constitute an 
improper use of the trademark or trade name.

If a trademark or trade name appears in a claim and 
is not intended as a limitation in the claim, the question 
of why it is in the claim should be addressed. 
Does its presence in the claim cause confusion as to 
the scope of the claim? If so, the claim should be 
rejected under 35 U.S.C. 112, second paragraph.

====2173.05(v) Mere Function of Machine====

Process or method claims are not subject to rejection 
by U.S. Patent and Trademark Office examiners 
under 35 U.S.C. 112, second paragraph, solely on the 
ground that they define the inherent function of a disclosed 
machine or apparatus. In re Tarczy-Hornoch, 
397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court 
in Tarczy-Hornoch held that a process claim, otherwise 
patentable, should not be rejected merely 
because the application of which it is part discloses 
apparatus which will inherently carry out the recited 
steps.

===2173.06 Prior Art Rejection of Claim Rejected as Indefinite===

All words in a claim must be considered in judging 
the patentability of a claim against the prior art. In re 
Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). 
The fact that terms may be indefinite does not make 
the claim obvious over the prior art. When the terms 
of a claim are considered to be indefinite, at least two 
approaches to the examination of an indefinite claim 
relative to the prior art are possible.

First, where the degree of uncertainty is not 
great,
and where the claim is subject to more than one 
interpretation and at least one interpretation would 
render the claim unpatentable over the prior art, an 
appropriate course of action would be for the examiner 
to enter two rejections: (A) a rejection based on 
indefiniteness under 35 U.S.C. 112, second paragraph; 
and (B) a rejection over the prior art based on 
the interpretation of the claims which renders the 
prior art applicable. See, e.g., Ex parte Ionescu, 
222 
USPQ 537 (Bd. App. 1984). When making a 
rejection over prior art in these circumstances, it is 
important for the examiner to point out how the claim 
is being interpreted. Second, where there is a great 
deal of confusion and uncertainty as to the proper 
interpretation of the limitations of a claim, it would 
not be proper to reject such a claim on the basis of 
prior art. As stated in In re Steele, 305 F.2d 859, 
134 
USPQ 292 (CCPA 1962), a rejection under 
35 
U.S.C. 103 should not be based on considerable 
speculation about the meaning of terms employed in a 
claim or assumptions that must be made as to the 
scope of the claims. 

The first approach is recommended from an examination 
standpoint because it avoids piecemeal examination 
in the event that the examiner’s 35 U.S.C. 112, 
second paragraph rejection is not affirmed, and may 
give applicant a better appreciation for relevant prior 
art if the claims are redrafted to avoid the 35 U.S.C. 
112, second paragraph rejection.