If a claim is unduly broad, or if it fails to include sufficient specificity, the
appropriate ground of rejection is Section 112, for claims must “particularly point out and
distinctly claim[]” the invention. See In re Vaeck, 947 F.2d 488, 495-96 (Fed. Cir. 1991)
(affirming rejection under Section 112 where “[t]here is no reasonable correlation
between the narrow disclosure in applicant’s specification and the broad scope of
protection sought in the claims”); In re Foster, 438 F.2d 1011, 1016 (C.C.P.A. 1971)
(claims “not commensurate with appellants’ own definition of what they are seeking to
cover” are rejected under Section 112, rather than Section 101); In re Prater, 415 F.2d
at 1403-04 (applying Section 112 to claims that included mental steps). The filing of a
broader claim than is supported in the specification does not convert the invention into
an abstraction and evict the application from eligibility for examination. A broad first
claim in a patent application is routine; it is not the crisis event postulated in the court’s
opinion.
The role of examination is to determine the scope of the claims to which the
applicant is entitled. See 37 C.F.R. §1.104(a). The PTO’s regulations provide:
On taking up an application for examination or a patent in a reexamination
proceeding, the examiner shall make a thorough study thereof and shall
make a thorough investigation of the available prior art relating to the
subject matter of the claimed invention. The examination shall be
complete with respect to both compliance of the application or patent
under reexamination with the applicable statutes and rules and to the
patentability of the invention as claimed, as well as with respect to matters
of form, unless otherwise indicated.
Id. §1.104(a)(1). The Manual of Patent Examining Procedure (MPEP) similarly instructs
the examiners to conduct a “thorough search of the prior art” before evaluating the
invention under Section 101. MPEP §2106(III) (8th ed., rev. 7, July. 2008) (“Prior to
evaluating the claimed invention under 35 U.S.C. §101, USPTO personnel are expected
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