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1504.04 MANUAL OF PATENT EXAMINING PROCEDURE
'f[ 15,65 Amendment May Not Be Possible
The claim might be fatally defective; that is, it might not be
possible to [11 without introducing new matter (35 U.S.C. 132,37
CFR 1.121).
Examiner Note:
In bracket 1, identify portion of the claimed design which is
insufficiently disclosed.
'f[ 15.51.01 Amendment to Disclosure Not Affecting cua«.
35 U.S.c. 132 Objection (New Matter)
The [11 is objected to under 35 U.S.C. 132 and 37 CFR 1.121
as introducing new matter hot supported by the original disclosure.
The original disclosure does not reasonably -convey to a
designer of ordinary skill in the art that applicant was in possession
of the amended-subject matter at the time the application was
filed. See In reRasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA
1981).
Specifically, there is no support in the original disclosure [2].
To overcome this objection, applicant may attempt to demonstrate
that the original disclosure establishes that he or she was in
possession of the amended subject matter or [3].
Examiner Note:
1. In bracket l,specify whether new drawing or amendment to
the drawing, title or specification.
2. In bracket 2, specifically identify what -is new matter so that
the basis for the objection is clear.
3. In bracket 3, insert specific suggestion how the objection
may be overcome depending on the basis; such as, "the broken
line showing of environmental structure in Fig. 1 ofthe new drawing
may be omitted to correspond to the original drawing" or "the
title may be amended by deleting the reference to environmental
structure".
II. 35 U.s.C.112, SECOND PARAGRAPH
Defects in claim language give rise to a rejection of
the claim under the second paragraph of 35 U.S.c.
112. The fact that claim language, including terms of
degree, may not be precise, does not automatically
render the claim indefinite under 35 U.S.C. 112, second
paragraph. "[T]he definiteness of the language
employed must be analyzed - not in a vacuum, but
always in light of the teachings of the prior art and of
the particular application disclosnre as it would be
interpreted by one possessing the ordinary level of
skill in the pertinent art." In re Moore, 439F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). A claim
may appear indefinite when read in a vacuum, but
may be definite upon reviewing the application disclosure
or prior art teachings. Moreover, an otherwise
definite claim in a vacuum may be uncertain when
reviewing the application disclosure and prior art.
August 2001
1500-32
Moore, 439 F.2d at 1235 n.2, 169 USPQ at 238 n.2.
See also MPEP § 2173.05(b).
Use of the phrases in the claim such as "or similar
article:' "or the like," or equivalent terminology has
been held to be indefinite. See Ex parte Pappas,
23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). However,
the use of broadening language such as "or
the like," or "or similar article" in the title when
directed to the environment of the article embodying
the design should not be the basis for a rejection under
35 U.S.C. 112, second paragraph. See MPEP
§ 1503.01, subsection 1.
Examiners are reminded that there is no per se
rule, and that the definiteness of claim language must
be evaluated on the facts and circumstances of each
application. The following form paragraphs may be
used.
'f[ 15.22.02 Rejection, 35 U.S.c. 112, 2nd Paragraph ("Or
the Like" In Claim)
The claim is rejected under 35 U.S.C. 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the
invention. The claim is indefinite because of the use of the-phrase
"[1]" following the litle. Cancellalion of said phrase in the claim
and each occurrence of the title throughout the papers, except the
oath or declaration, will overcome the rejection. See Ex parte'
Pappas, 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CFR
1.153.
Examiner Note:
1. This rejection should be used where there is another rejection
in the Office action. For issue with an examiner's amendment, see
form paragraph 15.69.01.
2. In bracket 1, insert --or the like-. or --or similar article--.
3. This form paragraph should not be used when"or the like" or
"of similar article" in the title-is directed to the environment of the
article embodying the design.
'f[ 15.69.01 Remove Indefinite Language ("Or The Like")
by Examiner's Amendment
The phrase [l] in the claim following the title renders the claim
indefinite. By authorization of [2] in a telephone interview on [3],
the phrase has been cancelled from the claim and at each occurrence
of the title throughout the papers, exceptthe oath or declaralion
(35 U.S.C. 112, second paragraph, and 37 CFR 1.153): See
Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).
Examiner Note:
In bracket 1, insert objectionable phrase, e.g., --Of the like--, -or
similar article--, etc,
The claim should be rejected as indefinite when it
cannot be determined from the designation of the
design as shown in the drawing, referenced in the title