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Prolix

So, does that term mean anything to you?

I managed to track down copies of the MPEP from the mid 1970s, because I was wondering what examiners had to face back in 1976 when the current production standards were enacted. (More on that at a later date.)

I ran across this fascinating paragraph from Version 3, Revision 48 (April 1976):

706.03(g) Prolix

Claims are rejected as prolix when they contain long recitations of unimportant details which hide or obscure the invention. Ex Parte Iagan, 1911 C.D. 10; 162 O.G. 538, expresses the thought that very long detailed claims setting forth so many elements that invention cannot possibly reside in the combination should be rejected as prolix. See also In re Ludwick, 1925 C.D. 306; 339 O.G. 393.

I have never heard of this, and have no idea of how it was applied back in the day.

Of course, having provisions like this under which rejections could be made would likely leave the door wide open to some fairly arbitrary rejections. After all, who is to say what details are 'unimportant', and whether or not such details 'hide or obscure the invention'? I can only imagine the mess that resulted when such rejections were appealed (which I suspect is why these provisions are no more).

Nonetheless, wow, there are occasional applications where it would be really nice to have 'prolix' as a basis for rejecting claims today.

Full post as published by Just a Patent Examiner on October 08, 2007 (boomark / email).