What makes a claim indefinite under 35 U.S.C. 112(b)?
A claim can be considered indefinite under 35 U.S.C. 112(b) if it creates confusion about when direct infringement occurs. The MPEP 2173.05(p) provides an example from the In re Katz case:
“A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
For instance, a claim that includes both system elements and user actions can be indefinite because it’s unclear whether infringement occurs when the system is created or when a user performs certain actions. To avoid indefiniteness, claims should focus on the capabilities of the system rather than specific user actions.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2173.05(P) - Claim Directed To Product - By - Process Or Product And Process,
Patent Law,
Patent Procedure