In a precedential decision, Ex parte Miyazaki1, the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office (USPTO) introduced a new indefiniteness standard for pending patent claims during prosecution. Specifically, the BPAI held that a pending claim is indefinite under 35 USC §112, second paragraph2, if the claim is amendable to two or more plausible claim constructions. This article explains how Miyazaki changes US patent law and identifies patent prosecution strategies in light of the new indefiniteness standard of Miyazaki.

In Miyazaki, the claims were directed to a printer.3 The Examiner rejected the claims under 35 USC §112, second paragraph, because the limitations regarding the “height” of the “paper feeding unit” and “sheet feeding area” were unclear. The applicant appealed this rejection, arguing that the claims were definite.

After considering the scope of the claims, the BPAI affirmed the Examiner’s rejection, holding that the claims were indefinite because they failed to recite any positional relationship between the user and the printer, thus, failing to impose any restriction on the height of the “paper feeding unit” and “sheet feeding area.” The BPAI considered an indefiniteness standard set forth by the Court of Appeals for the Federal Circuit (Federal Circuit) in which a claim is indefinite only if it is not amenable to construction or insolubly ambiguous.4 However, the BPAI noted that while this indefiniteness standard is based on a presumption of validity of claims in issued patents, claims in pending applications cannot benefit from such a presumption. Thus, the BPAI concluded that it was inappropriate to apply the indefiniteness standard to claims in pending applications and a lower indefiniteness standard was needed. The BPAI held that, for pending applications, if a claim is amenable to two or more plausible claim constructions that claim is indefinite under 35 USC §112, second paragraph.

Applying the lower indefiniteness standard, the BPAI concluded that the claims failed to specify a positional relationship between the user and the printer. Thus, the claims failed to impose a limitation on the height of the paper feeding unit because the claimed height depended on the position of the user and the printer. The BPAI also concluded that the specification did not clearly define the height of the paper feeding unit, because the specification failed to describe a positional relationship between the user and the printer. However, the BPAI concluded that claim 13 was not indefinite because the recitation “when the user is standing erect in front of the printer and standing substantially at ground level,” provided a positional relationship between the printer and the user.

The BPAI also entered a new ground of rejection for some of the claims, including claims 13, 15 and 26, for indefiniteness under 35 USC §112, second paragraph, determining that the limitation “sheet feeding area” was unclear. Applying the new standard, the BPAI determined that the specification defined “sheet feeding area” as two printer areas: (A) the accommodation space where the paper roll is loaded and (B) the cover member above the accommodation space where the carton and paper sheets rested for feeding into the printer. Furthermore, the BPAI determined that, based on the ordinary meaning, “sheet feeding area” referred to the printer area used for feeding paper sheets into the printer, which, according to the specification, was the cover member.

However, the BPAI concluded that the claims were not consistent with either the specification or the ordinary meaning. Specifically, claim 15 claimed a large printer comprising a sheet feeding area and a cover member. The BPAI surmised that if “sheet feeding area” included both the accommodation space and the cover member, then the recitation of a cover member in claim 15 would be redundant. Furthermore, claims 15 and 26 each claimed that the sheet feeding area was “operable to feed” sheets of paper, yet the BPAI concluded from the specification that the cover member was not operable to feed the paper rolls. The BPAI concluded that the specification, claims and ordinary meaning of the term lead to inconsistent claim constructions. Therefore, the BPAI held that the phrase “sheet feeding area” was amenable to two or more plausible claim constructions and thus the claims were indefinite.

The BPAI’s decision represents a substantial change in patent law. A claim with any degree of breadth is likely to be amenable to two or more reasonable claim constructions. Therefore, the BPAI’s holding penalizes an applicant for merely drafting a broad claim, which contradicts Federal Circuit precedent that breadth of a claim is not to be equated with indefiniteness.5 Another problem with the decision is that, while purporting to establish a new indefiniteness standard, the BPAI actually imposed the old indefiniteness standard. Specifically, the BPAI concluded that “sheet feeding area” was indefinite because it was unclear whether the recitation referred to the accommodation space or the cover member, due to the fact that the specification, claims and ordinary meaning of the language were inconsistent. Thus, even though the BPAI claimed that the limitation was amenable to two possible definitions, its actual objection was that the two possible definitions were inconsistent. This is the very definition of insolubly ambiguous. A claim is insolubly ambiguous when all reasonable efforts at claim construction prove futile because normal claim construction tools lead to inconsistent results. Thus, although purporting to apply the new USPTO indefiniteness standard to “sheet feeding area,” the BPAI actually applied the old Federal Circuit standard, thus confusing the issue of how to apply the new indefiniteness standard.

That being said, there are options available to combat an indefiniteness rejection under the new standard. If the specification discloses two or more embodiments, the broad claim can be split into two or more narrower claims, with each claim covering a single embodiment. However, this option is not always available, as the applicant may not wish to add new claims for various reasons, such as excess claim fees.

Another option is to traverse the rejection by distinguishing Miyazaki and arguing that the features in the claim, while broad, clearly define the metes and bounds of the invention, so that one of ordinary skill in the art would understand how to avoid infringement of the claim.6 In Miyazaki, the BPAI’s true objection to the “height” of the “paper feeding unit” or “sheet feeding area” was that the recitation did not clearly define the metes and bounds of the invention because it did not provide positional information regarding the user and the printer as a whole. Furthermore, the BPAI concluded that “sheet feeding area” did not clearly define the metes and bounds of the invention because, based on the specification and claim language, it was unclear whether the recitation referred to the accommodation space or the cover member of the printer.

In conclusion, while the wide-reaching language of the new USPTO indefiniteness standard for pending claims articulated in Miyazaki may lead to a flood of rejections merely based on a claim’s breadth, it appears that one may still traverse an indefiniteness rejection under Miyazaki if one can show that the claim, while broad, clearly defines the metes and bounds of the invention.