MPEP § 2172.01 is routinely misapplied by examiners. Examiners appear to apply it in situations where the examiner thinks that what the applicant is claiming is too broad, but:
(i) the factual circumstances of the two main cited cases, In re Mayhew and In re Venezia, were quite narrow and never considered by the examiners; and
(ii) most rejections under § 2172.01 directly contravene § 2173.04 (breadth is not indefiniteness).
I suggest, preferably, deleting this section or, alternatively, providing additional explanation reiterating that it only applies under a very narrow set of circumstances. I would also note that nearly every PTAB decision citing Mayhew has overturned the Examiner's § 112 rejection under MPEP 2172.01. See, e.g.,:
Ex Parte Mohapatra, Appeal No. 2015001104
Ex Parte Meckler, Appeal No. 2013005359
Ex Parte Panzer et al, Appeal No. 2013002107
Ex Parte Schwarz et al, Appeal No. 2014001580
Ex Parte Wan et al, Appeal No. 2014002206
Voting on Ideas
Vote for your favorite ideas by clicking on the up arrow.To undo an upvote, simply click the arrow again. This second click removes your vote.