When should an examiner make a rejection under 35 U.S.C. 112(b) for exemplary claim language?
An examiner should consider making a rejection under 35 U.S.C. 112(b) when exemplary claim language creates uncertainty about the claim’s scope. The MPEP 2173.05(d) states:
“In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.”
The examiner should analyze whether the metes and bounds of the claim are clearly set forth. If the exemplary language creates ambiguity about what is actually being claimed, a 112(b) rejection may be appropriate. However, the MPEP also notes that the mere use of phrases like “such as” or “for example” does not automatically render a claim indefinite. Each case should be evaluated on its own merits.
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