Sample of how to respond to a 35 USC 112, second paragraph rejection

Below are two samples of how I typically respond to 112, second paragraph rejections.

1)      On page 2 of the Office Action dated April 19, 2013, claims 1 and 2 are rejected under 35 U.S.C § 112, second paragraph. To expedite prosecution and without conceding to the Examiner’s rejections, Applicant has amended claims 1 and 2 to recite proper antecedent basis. Accordingly, the claims distinctly claim the subject matter which the applicant regards as the invention, and withdrawal of this rejection is respectfully requested.

 2)      On page 2 of the Office Action dated April 19, 2013, claims 1 and 2 are rejected under 35 U.S.C § 112, second paragraph. Applicant has amended claims 1 and 2 in accordance with the Examiner’s comments. Accordingly, the claims distinctly claim the subject matter which the applicant regards as the invention, and withdrawal of this rejection is respectfully requested.

In patent claims there are two separate requirements for claims under 35 U.S.C 112. The second requirement being that claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected against the patent. Essentially, this means that claims must clearly define the subject matter of the claims.

35 U.S.C. 112, second paragraph rejections may be issued for various reasons such as the claims are not precise, clear, correct, ambiguous, have grammatical errors, the claims contradict themselves and/or the specification, antecedent basis, etc.

A typical 35 USC, 112, second paragraph rejection will be on the first or second page of the “DETAILED ACTION” portion of an office action, and will state something along the lines of “Claims 1, 2,… are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention.”

In the office action, the examiner may further clarify what is wrong with the claims, such as “Claim 1 recites the limitation ‘THE CAR’ in line 1. There is insufficient antecedent basis for this limitation in the claim. What is meant by antecedent basis is that the first time you introduce an element in a claim, the element should be “A CAR” and then when subsequently referring to this element in the claim it should be “THE CAR.” Antecedent basis is a good way for examiners and applicants to keep track of when elements are first brought up in the claims, and what limitations are attached to what elements.

Another common 112, second paragraph error is when a claim includes two of the same elements that have the same name. For example, if your claims have two widgets doing certain actions, you have to specifically label each of the widgets. A simple way to do this is to claim “a first widget configured to…” and “a second widget configured to…” Then, in subsequent limitations include the identifier of, “wherein THE FIRST WIDGET is further configured too…” Thus, by labeling each element with a different number, applicants can easily refer back to specific elements of the claims.

A response to a 112, second paragraph rejection typically should not be a long winded argument. Even if the examiner is wrong, a simple clarifying amendment is typically easier than arguing with the examiner about trivial claim language.

By | 2013-04-19T19:03:04+00:00 April 19th, 2013|Patent Basics|Comments Off on Sample of how to respond to a 35 USC 112, second paragraph rejection