Can a “Use” claim be rejected under both 35 U.S.C. 101 and 112(b)?

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.

Yes, a “Use” claim can be rejected under both 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections. The MPEP 2173.05(q) states:

“It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections.”

This dual rejection approach addresses both the issue of patent eligibility (101) and indefiniteness (112(b)). The MPEP provides specific form paragraphs for examiners to use in these cases: form paragraph 7.05.01 for 35 U.S.C. 101 rejections and form paragraph 7.34.01 for 35 U.S.C. 112(b) rejections.