Summary: If an applicant fails to address indefiniteness rejections, the USPTO can properly reject claims as failing to meet the requirements of 35 U.S.C. § 112(b).

Case: In re Thomas G. Packard, No. 2013-1204 (Fed. Cir. May 6, 2014) (precedential). On appeal from U.S. Patent and Trademark Office, Patent Trial and Appeal Board. Before O’Malley, Plager, and Taranto, per curiam. Concurring opinion by Plager.

Procedural Posture: Appellant appealed Patent Trial and Appeal Board’s decision that application claims were in­­definite and not in compliance with requirements of 35 U.S.C. § 112(b). CAFC affirmed.

  • Indefiniteness: When the USPTO has issued a well-grounded rejection identifying how claim language is ambiguous, vague, incoherent, opaque, or unclear, the burden is shifted to the applicant to rebut the prima facie case through amendments and/or arguments. If the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the requirements of 35 U.S.C. § 112(b). Petitioner did not adequately respond to, and completely ignored other, claim language rejections, but instead offered explanations of what he thought the written description and figures showed. The Board’s affirmance of the examiner’s final rejection correctly identified Petitioner’s failure to comply with the statutory requirements of 35 U.S.C. § 112(b).
  • Indefiniteness: The court identified a difference between examining indefiniteness rejections by the USPTO pre-issuance as opposed to indefiniteness challenges post-issuance. During prosecution, the claims can be easily amended so that they are clear and unambiguous.
  • Indefiniteness: Petitioner’s argument that the Board applied the wrong standard when finding the claims indefinite relying on whether the claims contained words or phrases whose meaning is unclear as opposed to the appropriate standard of determining whether the claims are insolubly ambiguous was not addressed by the court. The legal standard of indefiniteness is currently under review with Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 715 F.3d 891 (Fed. Cir. 2013), cert. granted, 82 U.S.L.W. 3195 (U.S. Jan. 10, 2014) (No. 13-369), argued on April 28, 2014. A decision is expected in June 2014.

Plager, concurring:

Judge Plager concurred in that he agreed with the outcome of the court, but provided a more thorough explanation of the indefiniteness requirement. In particular, he listed three approaches of claim construction the courts have employed, including:

1) Give controlling weight to the policy of upholding the USPTO’s decision to issue a presumptively valid patent, with substantially less concern for the notice function of patents. Thus, find a possible meaning that preserves the validity of the patent claim, without particular regard for what competitors or the public might have understood, i.e., what would be understood by those skilled in the art involved at the time of the invention.

2) Give weight to the notice function of patents, while still recognizing the role of the presumption of validity. Thus, choose from among the available meanings the one that seems to best accord with what one of reasonable skill in the art would understand to be intended, and which the public, including competitors, would assume to be the correct reading. When there is more than one such understanding, as sometimes appears to be the case, this could lead to a preference for the understanding that preserves the validity of the patent claim.

3) Give full weight to the importance of the notice function of patents, recognizing that it is the claim drafter/patentee who is ultimately responsible for problems created by ambiguous terms. When confronted with a patent claim that has several reasonable meanings for which the patent itself demonstrates no preference (and certainly true of an incoherent term), the result of this option would be a holding that an ambiguous term by definition fails to comply with the statutory requirements for claim drafting. Thus, if a member of the public in order to understand the patent claim must guess about the meaning of an ambiguous term, the claim would not be patentable and is otherwise invalid.

Per Judge Plager, since district courts apply different options post-issuance, the USPTO can use its own lower threshold for pre-issuance cases.