Your Claims are Too Broad

Claim scope is at the heart of patent law, and prosecution in particular. One objective in prosecution is to define the broadest possible scope of the invention limited only by the prior art, assuming you can support (in a Section 112 sense) the invention across the full range of the claim.

So when someone says that “those claims are too broad” without referencing art or some other issue, such as statement can be categorized as nonsense. One can only determine if claims are too broad by applying them to, for example, the prior art, which then becomes a specific analysis based on a single reference (anticipation), or a modification of a single reference or a combination of multiple references (and optionally modifications thereof) (obviousness).

The assertion that “you write claims that are too broad” is especially troubling when it comes from a patent office. Examiners are supposed to understand relative and subjective terms - they reject claims all the time for being indeterminate in terms of scope. MPEP 2173.05(b) discusses relative terminology, and examiners cite it often. If a claim recites a “large hole”, for example, an examiner likely will reject the claim as indefinite since one cannot determine what makes a hole large, as compared to small. Of course, the examiner must consider if one skilled in the art can determine the claim meaning via some guidance in the specification (from the MPEP, some citations omitted):

Terms of degree are not necessarily indefinite… when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree).

In any event, an assertion that claims are “broad” divorced from specific reference to prior art references is unhelpful. It is especially unhelpful coming from a patent office whose job is to understand that inventions are defined relative the state of the art, and who must already understand how to flag indefinite relative terms whose scope cannot be ascertained. A claim with very few elements may nevertheless be extremely “narrow” in the sense that it has only a very small element beyond the state of the art.

Whenever an examiner tells you your claims are “too broad” without specific reference to why the claims are either anticipated or obvious in view of certain references is being unhelpful at a minimum. Such an assertion is not grounded in logic. Remind examiners that they understand relative terms and that using an argument without reference to any standard for measuring scope is not an approach supported by the MPEP.