Example of how to respond to a rejection of the second paragraph of 35 USC 112

Below are two examples of how I typically respond to rejections in the second paragraph of 112.

1) On page 2 of the Office Action of April 19, 2013, claims 1 and 2 are dismissed pursuant to 35 USC § 112, second paragraph. To expedite the prosecution and without yielding to the examiner’s rejections, the applicant has amended claims 1 and 2 to recite the proper background basis. Consequently, the claims clearly claim the object that the applicant considers the invention, and the withdrawal of this rejection is respectfully requested.

2) On page 2 of the Office Action of April 19, 2013, claims 1 and 2 are dismissed pursuant to 35 USC § 112, second paragraph. The applicant has modified claims 1 and 2 in accordance with the examiner’s comments. Consequently, the claims clearly claim the object that the applicant considers the invention, and the withdrawal of this rejection is respectfully requested.

In patent claims there are two separate requirements for claims according to 35 USC 112. The second requirement is that the claims must in particular point out and clearly define the boundaries of the subject that will be protected against the patent. Essentially, this means that complaints must clearly define the subject of the complaints.

35 USC 112, second paragraph, rejections can be issued for various reasons, such as that the statements are not precise, clear, correct, ambiguous, have grammatical errors, the statements contradict each other and / or the specification, background basis, etc.

A typical 35 USC, 112, second paragraph rejection will be on the first or second page of the “DETAILED ACTION” portion of an office action, and will state something like “Claims 1, 2, … are rejected under 35 USC 112, second paragraph, indefinitely for not specifically pointing out or clearly claiming the object that the applicant considers the invention. “

In the office action, the examiner can further clarify what is wrong with the claims, such as “Claim 1 recites the limitation ‘THE CAR’ on line 1. There is no sufficient basis for this limitation in the claim The basis is that the first time you enter an item on a claim, the item must be “A CAR” and then when you later refer to this item on the claim, it must be “THE CAR.” it is a good way for examiners and applicants to keep track of when items are first mentioned in claims and what limitations are attributed to which items.

Another common second paragraph 112 mistake is when a claim includes two of the same items that have the same name. For example, if your claims have two widgets that perform certain actions, you must specifically tag each of the widgets. A simple way to do this is to claim “a first widget configured for …” and “a second widget configured for …” Then, in subsequent limitations, include the identifier of “, in which THE FIRST WIDGET is also additionally configured … “Thus, by labeling each item with a different number, applicants can easily refer to specific items in the claims.

A response to a rejection of the 112 second paragraph should not normally be a lengthy argument. Even if the examiner is wrong, a simple clarifying amendment is usually easier than arguing with the examiner over trivial claim language.