How should examiners establish a clear record when rejecting claims for indefiniteness?

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.

Examiners are required to establish a clear record when rejecting claims for indefiniteness. The MPEP provides guidance:

“Examiners should note that Office policy is not to employ per se rules to make technical rejections. Examples of claim language which have been held to be indefinite set forth in MPEP § 2173.05(d) are fact specific and should not be applied as per se rules.”

To establish a clear record, examiners should:

• Clearly communicate findings and reasons supporting the rejection in an Office action
• Identify the specific term or phrase that is indefinite
• Explain in detail why the term or phrase renders the claim scope unclear
• Indicate, when practicable, how indefiniteness issues may be resolved
• Provide enough information for the applicant to prepare a meaningful response

By providing a complete explanation, examiners enhance the clarity of the prosecution history and facilitate efficient resolution of indefiniteness issues.