## Facts

- An inventor-applicant sought a U.S. utility patent with multiple claims, including an “omnibus” claim.
- The omnibus claim attempted to claim the invention generally “as disclosed” in the specification and drawings, without reciting specific elements, steps, or other limiting features.
- The claim effectively incorporated the full disclosure by reference rather than stating the scope in the claim language itself.
- The examiner rejected the omnibus claim as indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA) for failing to particularly point out and distinctly claim the invention.
- The applicant appealed to the Board of Patent Appeals and Interferences, arguing the disclosure adequately described the invention and that omnibus-style claims had historical and foreign analogs.

## Issues

1. Whether a claim that defines the invention only by reference to the specification and drawings satisfies 35 U.S.C. § 112, ¶ 2’s requirement that claims particularly point out and distinctly claim the subject matter regarded as the invention.

## Decision

- The Board affirmed the examiner’s rejection.
- The Board held that an omnibus claim defining the invention only “as disclosed” in the specification and drawings is indefinite under § 112, ¶ 2.
- The Board rejected reliance on historical or foreign practice as a basis to excuse noncompliance with the statutory definiteness requirement.

## Legal Principles

- Claims must state the invention’s boundaries in the claim text; wholesale incorporation of the specification and drawings as the claim’s definitional content fails § 112, ¶ 2.
- The definiteness requirement serves a public-notice function: the public must be able to determine what is covered and what is not from the claims.
- The specification describes and enables; the claims separately define the legally protected subject matter. An omnibus claim improperly collapses these distinct roles.
- A claim is indefinite when its scope cannot be determined from the claim language without reconstructing the intended boundaries from the entire disclosure.

## Conclusion

The Board held that a patent claim cannot satisfy § 112, ¶ 2 by merely claiming the invention “as disclosed” in the specification and drawings; claims must independently and distinctly define the scope of the requested patent right.


Ex parte Fressola, 27 U.S.P.Q.2d 1608 (B.P.A.I. 1993)