How can an applicant overcome an indefiniteness rejection based on relative terminology?

An applicant can overcome an indefiniteness rejection based on relative terminology in several ways. According to MPEP 2173.05(b), “During prosecution, an applicant may overcome an indefiniteness rejection by providing evidence that the meaning of the term of degree can be ascertained by one of ordinary skill in the art when reading the disclosure.” This can include:

• Amending the claim to remove the subjective term
• Providing evidence that the meaning of the term can be ascertained by one of ordinary skill in the art
• Submitting a declaration under 37 CFR 1.132 showing examples that meet the claim limitation and examples that do not

However, it’s important to note that “[f]or some facially subjective terms, the definiteness requirement is not satisfied by merely offering examples that satisfy the term within the specification.”

To learn more:

• indefiniteness rejection
• relative terminology
• patent prosecution
• claim amendments