In a precedential decision, the Patent Trial and Appeal Board (PTAB) upheld the longstanding US Patent and Trademark Office (PTO) practice of using a lower threshold to assess claim indefiniteness during prosecution relative to the Nautilus standard applied by courts. Ex parte McAward, Appeal No. 2015-006416 (PTAB, Aug. 25, 2017) (Horner, APJ) (precedential).

The appellant sought review of the Examiner’s rejection of claims as indefinite under 35 USC § 112, second paragraph, and as unpatentable under 35 USC § 103(a), based on a “configured to” limitation in the claims. The PTAB has designated the portion of the decision directed to the analysis of the rejection under § 112 as precedential.

The PTAB first explained the process of applying § 112 during examination of a patent application—a process that includes determining the scope of the claims, applying the broadest reasonable interpretation standard. Proceeding to discuss indefiniteness, the PTAB applied the approach approved by the US Court of Appeals for the Federal Circuit in In re Packard, in which a “claim is indefinite when it contains words or phrases whose meaning is unclear.” The PTAB noted that “claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms” and explained that the “broadest reasonable interpretation standard differs from the claim interpretation standard used during patent litigation in the federal courts.” The PTAB also noted, however, that the “Supreme Court has recognized ‘a degree of inconsistency in the standards used between the courts and the agency’ in claim interpretation,” and the “Court approved of the distinction, explaining that ‘construing a patent claim according to its broadest reasonable construction helps to protect the public.’”

Thus, the PTO’s “application of the broadest reasonable interpretation for pending claims and its employment of an interactive process for resolving ambiguities during prosecution results in . . . a lower threshold for ambiguity than a court’s.”

The PTAB noted that the Supreme Court’s approach to assessing indefiniteness, detailed in its 2014 decision in Nautilus v. Biosig Instruments (IP Update, Vol. 17, No. 6), requires that a “patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” The PTAB explained that when an issued patent is under review by a court, “simple amendments are impossible, the full prosecution record is available, and courts endeavor to adopt saving constructions.” However, the PTAB noted the PTO’s participation in the Nautilus case and its position that was not “intended to overturn the PTO’s longstanding practice,” concluding that Nautilus does not “mandate a change in the Office’s approach to indefiniteness in patent-examination matters in which . . . the claims are interpreted under the broadest reasonable interpretation standard.”

Applying the Packard standard to the claims rejected under § 112 as indefinite, the PTAB agreed with the Examiner that the “configured to” limitation in question was “vague and unclear, and that a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.” Accordingly, the PTAB affirmed the rejection of the claims as indefinite.

Practice Note: Applicants should take advantage of the interactive process with an examiner during patent prosecution to resolve potential ambiguities of a claim while capturing as much claim breadth as the PTO will allow.