What actions must a patent examiner take when encountering indefinite claim language?
When a patent examiner encounters indefinite claim language, they are required to take specific actions. The MPEP provides clear guidance:
“Therefore, claims that do not meet this standard must be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph as indefinite. Such a rejection requires that the applicant respond by explaining why the language is definite or by amending the claim, thus making the record clear regarding the claim boundaries prior to issuance.“
Additionally, the examiner must provide a thorough explanation for the rejection: “As an indefiniteness rejection requires the applicant to respond by explaining why the language is definite or by amending the claim, such rejections must clearly identify the language that causes the claim to be indefinite and thoroughly explain the reasoning for the rejection.” This ensures that the applicant has a clear understanding of the issues and can respond appropriately.
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