What actions can an examiner take if claims don’t meet the requirements of 35 U.S.C. 112(b)?
If an examiner determines that claims do not meet the requirements of 35 U.S.C. 112(b), they can take specific actions as outlined in MPEP 2171:
“If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the examiner is to reject the claims under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
Additionally, the examiner should provide a clear explanation for the rejection:
“If a rejection is based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner should further explain whether the rejection is based on indefiniteness or on the failure to claim what the inventor or a joint invention regards as the invention.”
This guidance ensures that applicants receive specific feedback on how to address issues with their claims, whether related to indefiniteness or misalignment with the inventor’s conception of the invention.
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