MPEP § 2173.04 — Breadth Is Not Indefiniteness (Annotated Rules)
§2173.04 Breadth Is Not Indefiniteness
This page consolidates and annotates all enforceable requirements under MPEP § 2173.04, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Breadth Is Not Indefiniteness
This section addresses Breadth Is Not Indefiniteness. Primary authority: 35 U.S.C. 112(b), 35 U.S.C. 112, and 35 U.S.C. 112(a). Contains: 1 permission and 3 other statements.
Key Rules
Alternative Limitations (MPEP 2173.05(h))
Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad. 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, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, would be appropriate. If the claim is too broad because it is not supported by the original description or by an enabling disclosure, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, would be appropriate. If the claim is too broad because it reads on the prior art, a rejection under either 35 U.S.C. 102 or 103 would be appropriate.
Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad. 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, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, would be appropriate. If the claim is too broad because it is not supported by the original description or by an enabling disclosure, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, would be appropriate. If the claim is too broad because it reads on the prior art, a rejection under either 35 U.S.C. 102 or 103 would be appropriate.
Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad. 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, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, would be appropriate. If the claim is too broad because it is not supported by the original description or by an enabling disclosure, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, would be appropriate. If the claim is too broad because it reads on the prior art, a rejection under either 35 U.S.C. 102 or 103 would be appropriate.
Lack of Antecedent Basis (MPEP 2173.05(e))
Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad. 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, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, would be appropriate. If the claim is too broad because it is not supported by the original description or by an enabling disclosure, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, would be appropriate. If the claim is too broad because it reads on the prior art, a rejection under either 35 U.S.C. 102 or 103 would be appropriate.
Citations
| Primary topic | Citation |
|---|---|
| Alternative Limitations (MPEP 2173.05(h)) Lack of Antecedent Basis (MPEP 2173.05(e)) | 35 U.S.C. § 102 |
| Alternative Limitations (MPEP 2173.05(h)) Lack of Antecedent Basis (MPEP 2173.05(e)) | 35 U.S.C. § 112 |
| Alternative Limitations (MPEP 2173.05(h)) Lack of Antecedent Basis (MPEP 2173.05(e)) | 35 U.S.C. § 112(a) |
| Alternative Limitations (MPEP 2173.05(h)) Lack of Antecedent Basis (MPEP 2173.05(e)) | 35 U.S.C. § 112(b) |
| – | In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) |
| – | In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2173.04 — Breadth Is Not Indefiniteness
Source: USPTO2173.04 Breadth Is Not Indefiniteness [R-10.2019]
Breadth of a claim is not to be equated with indefiniteness. In reMiller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) (“Breadth is not indefiniteness.”). A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. But a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear. But a genus claim that could be interpreted in such a way that it is not clear which species are covered would be indefinite (e.g., because there is more than one reasonable interpretation of what species are included in the claim).
Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad. 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, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, would be appropriate. If the claim is too broad because it is not supported by the original description or by an enabling disclosure, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, would be appropriate. If the claim is too broad because it reads on the prior art, a rejection under either 35 U.S.C. 102 or 103 would be appropriate.