Drafting Fixable vs. Amendment Created: A Tale of Two §112 Rejections

I’ve been reading through a lot of office actions lately.  I think these two charts are interesting that show opposite workflow patterns for the two main §112 rejection grounds. For indefiniteness under §112(b), examiners make these more-often-than-not in the first non-final office action. For written description and enablement under §112(a), the pattern flips: final rejection rates exceed first non-final rates.

The §112(b) gap is consistent with the standard prosecution workflow. Examiners flag indefiniteness problems on the first office action. Applicants then amend claims to tighten-up the scope, and many of those problems are resolved before the application reaches a final rejection. Indefiniteness is, in this sense, often a “drafting fixable” defect. This is not absolutely true since applicants might add new problems through amendment, or examiners might notice the problem later in time.

The §112(a) inversion reflects a different dynamic. Written description and enablement problems often surface after the applicant amends, particularly when amendments push claim language beyond what the original specification actually supports. So even though the disclosure is fixed at filing, the rejections accumulate as prosecution narrows or shifts the claims.  Many of the initial rejections for 112(a) involve continuation cases or PCT cases with preliminary amendments.