How does the USPTO determine if a claim is too broad?

The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:

1. Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
2. Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
3. Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.

The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“

Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.

To learn more:

• USPTO
• claim breadth
• patent examination
• 35 U.S.C. 112
• 35 U.S.C. 102
• 35 U.S.C. 103