PTAB Decision: Ex parte McAward, Appeal No. 2015-006416 (PTAB, August 25, 2017)

Background: The Office rejected claims to a “water leakage detector” under 35 U.S.C. § 112, second paragraph, as indefinite. In particular, the Office found that the water detector “configured to be reliably installed by an untrained installer by an untrained or homeowner and not require the services of a plumber or electrician to perform installation . . .” was indefinite becasue the “configure to” language failed to provide any structure. In contrast, Appellants argued “configured to” was understood to mean “capable of being installed without special knowledge or tools.”

Issue: Did the USPTO’s long standing approach to indefiniteness change in view of the Supreme Court’s decision in Nautilus Inc. v. Biosig Instruments, Inc., 582 U.S.__, 134 S. Ct. 2120 (2014)?

Outcome: No, there was no change in the way in which the USPTO evaluates indefiniteness. Under the broadest reasonable interpretation when read in view of the Appellant’s specification, the PTAB found the “configured to” language to be indefinite. The specification failed to provide structure outside of the separately recited claim elements and merely associates the level of ordinary skill in the art with the “configure to” language which is also not defined in the specification.

Prosecution Takeaway: This PTAB precedential decision confirms the long-standing approach taken by the Office to evaluate compliance with the Section 112, definiteness requirement.

The Office bears the procedural burden of presenting a prima facie of indefiniteness. That is, the first step in the analysis is determining the scope of the claims under a broadest reasonable interpretation in light of the specification. The Office, however, to establish a prima facie case of indefiniteness next needs to “explain[] how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.” This starts an “interactive” process between the Office and the applicant where “amend[ments to] the claims or [ ] providing evidence or explanation that shows why the claims are not indefinite.” It is also distinct from what interpretation is used during patent litigation; the Supreme Court recognized and approved this difference. Indefiniteness during prosecution is lower threshold than that once the application matures into a granted patent. That is due in part to the different roles the USPTO and the courts play. During examination, the patent application’s record is still developing, opportunities to amend are available, and the submission of arguments and evidence to rebut the Office’s determination can be made. Whereas with a granted patent, amendments are “impossible,” the prosecution history is now fixed, and “adoption [of] saving constructions” may be necessary. This difference is not necessarily a difference in interpretation of the statue.

Nonetheless, the Office’s approach to indefiniteness did not change in view of Nautilus. Quoting In re Packard, 751 F.3d 1307 (Fed. Cir. 2014), the Office recognizes that indefinitness does “not demand for unreasonable precision” and “not . . . a verbal precision of the kind found in mathematics.”