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35 U.S.C. 112, Second Paragraph Examination Memorandum

35 U.S.C. 112, Second Paragraph Examination Memorandum. Robert Clarke Director, Office of Patent Legal Administration United States Patent and Trademark Office. 35 U.S.C. 112, Second Paragraph Examination Memorandum.

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35 U.S.C. 112, Second Paragraph Examination Memorandum

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  1. 35 U.S.C. 112, Second Paragraph Examination Memorandum Robert Clarke Director, Office of Patent Legal Administration United States Patent and Trademark Office

  2. 35 U.S.C. 112, Second Paragraph Examination Memorandum • Memorandum signed by John Love, Deputy Commissioner for Patent Examination Policy (DCPEP) on September 2, 2008: “Indefiniteness rejections under 35 U.S.C. 112, second paragraph”

  3. 35 U.S.C. 112, Second Paragraph Examination Memorandum Purpose: Remind the Examining Corps about the appropriate use of indefiniteness rejections and the public policy rationale for requiring definite claim language. Triggering Event: The Federal Circuit articulated the following: “. . .the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances . . .” See Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). The Federal Circuit later re-emphasized this same point in a more recent decision, Lucent Technologies, Inc. v. Gateway, Inc., 543 F.3d 710 (Fed. Cir. 2008).

  4. 35 U.S.C. 112, Second Paragraph Examination Memorandum Issues discussed in the Examination Memorandum • Resolve confusion over January 17, 2003 DCPEP memorandum regarding indefiniteness rejections in light of the Festo decision, which was misconstrued as discouraging the use of 35 U.S.C. 112, second paragraph rejections during examination. • Discuss and clarify the appropriate use of indefiniteness rejections under 35 U.S.C. 112, second paragraph, based upon a lack of a clear and precise definition of claim terms, i.e. Halliburton’s ambiguity issue. Examiner’s are encouraged to make such rejections when appropriate. (See MPEP 2173.02) • Discuss and clarify the appropriate use of indefiniteness rejections under 35 U.S.C. 112, second paragraph, based upon a lack of proper antecedent basis in the claims. Examiner’s are encouraged to make such rejections when appropriate. (See MPEP 2173.05(e))

  5. 35 U.S.C. 112, Second Paragraph Examination Memorandum Examination guidance delineating appropriateness when issuing indefiniteness rejections for imprecise claim term definitions: • An indefiniteness rejection is generally proper if: • Applicant discloses a definition in the specification, but the definition is not clear and precise to one of ordinary skill in the art. • Applicant’s usage of a term in the claims is inconsistent with their disclosure regarding the term in the specification. • Applicant uses a claim term that is not used or defined in the specification, and the meaning is not discernible. • An indefiniteness rejection is generally not proper if: • Applicant clearly discloses any definition or special meaning of a claim term to one of ordinary skill in the art. • Applicant’s usage of a term in the claims is consistent with their disclosure regarding the term in the specification. • Applicant uses a claim term that is not used or defined in the specification, but the meaning is discernible to one of ordinary skill in the art. (Note: An objection under 37 CFR 1.75(d)(1) maybe appropriate)

  6. 35 U.S.C. 112, Second Paragraph Examination Memorandum Examination guidance delineating appropriateness when issuing indefiniteness rejections for lack of antecedent basis: • An indefiniteness rejection is generally appropriate if: • The lack of explicit antecedent basis makes the claim unclear to one of ordinary skill in the art as to whether or not applicant is further limiting a claim limitation or introducing a new claim limitation. • An indefiniteness rejection is generally not appropriate if: • The scope of the claim is reasonably ascertainable by one of ordinary skill despite a lack of explicit antecedent basis.

  7. 35 U.S.C. 112, Second Paragraph Examination Memorandum Practitioner Relevance: “ . . . the patent drafter is in the best position to resolve the ambiguity in the patent claims . . . so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton at 1255.

  8. Questions?

  9. Contact Information Robert Clarke robert.clarke@uspto.gov (571) 272-7735

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