For example:

...the message data source content to be transmitted, hereinafter referred to as “the source content” ...

I feel I need to do something like this in multiple places because the examiner has brought up rejections based on unclear or incomplete distinctions of terms or phrases. I will have it all reviewed by an attorney but would like to understand now if it's a reasonable plan as part of the revisions.


It's not really a typical approach. I can't recall ever having seen it in fact. For this reason, I can't say for sure whether it would be allowed or not, but examiners are generally pretty conservative about such things, so I would expect not.

In the example you provide, it seems that you want to abbreviate the phrase "message data source content". If there is no other source content in the claims, it would be reasonable to simply say "the source content" later, since the only reasonable interpretation would be that it refers to the message data source content. However, it would also be a reasonable approach to refer to "the message data source content", without any abbreviation. Brevity should not come at the cost of clarity, after all.

In the US, you can also use the description to define terms used in the claims. However, this approach is not typically available in other jurisdictions (notably, Europe), so you would want to at least make sure any definitions in the description are in claim-like language such that they can be straightforwardly inserted into the claims by amendment.

  • Thanks, Maca. In the example provided, I agree that the phrase can be shortened to "message data" or "message source" or "message content" without any meaning lost. But in another case, I need to distinguish between a "transmission destination icon" and a "target destination icon" which sound similar but have different purposes. So I am struggling with the best way to do this. – Charles Dec 26 '17 at 3:21
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    @Charles Is there any reason you could not repeat the terms entirely each time? – Maca Dec 26 '17 at 9:04
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    @Charles if in doud, repeat the phrase. As Maca put it “Brevity should not come at the cost of clarity“. That sentence alone is a perfect answer. – DonQuiKong Dec 26 '17 at 9:50
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    I think there's an important part missing here actually. “the examiner has brought up rejections“ - anything added to the claims now can get you a rejection for adding matter. Maca maybe you could add a paragraph about that. The info that we're not pre-filing here changes the possibilities. – DonQuiKong Dec 26 '17 at 12:39
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    @Charles Yes, just add "the" after subsequent mentions in the claims. A lack of antecedence means you used "the" or "said" for the first mention of it, and so it's not clear what you are referring to. For optional plurals, you would typically say something like "...the system comprises one or more icons, the one or more icons being...". It may be worth revising your question with more details (and an example), since that could help an answer be a bit clearer. – Maca Dec 26 '17 at 22:23

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