What statutory provisions address undue breadth in patent claims?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Undue breadth in patent claims can be addressed under different statutory provisions, depending on the specific issues. The MPEP 2173.04 outlines three main scenarios:

• 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph: “If the claim is too broad because it does not set forth that which the inventor or a joint inventor regards as the invention as evidenced by statements outside of the application as filed.“
• 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph: “If the claim is too broad because it is not supported by the original description or by an enabling disclosure.“
• 35 U.S.C. 102 or 103: “If the claim is too broad because it reads on the prior art.“

Each of these provisions addresses a different aspect of claim breadth, ensuring that claims are properly defined, supported, and novel.