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Court Unable to Perceive Ambiguity in Claim That Seemed “So Apparent” to PTO

May 09, 2001

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Last Month at the Federal Circuit - June 2001

Judges: Gajarsa (author), Lourie, and Plager

In In re Larsen, No. 01-1092 (Fed. Cir. May 9, 2001) (nonprecedential decision), the Federal Circuit held that the Board had erred as a matter of law in concluding that certain application claims were indefinite under 35 U.S.C. § 112 , ¶ 2.

Walter L. Larsen’s patent application is directed to an elastic, flexible loop used to fasten the hook of a garment hanger to a clothesline. Claim 30 is representative of the rejected claims and recites:

The combination of a hook, which is part of and which comprises suspension means for a garment hanger, and a flexible and elastically elongatable effectively closed loop, wherein the hook and the loop are assembled and arranged in a hereinafter described relative position with respect to each other to fasten the hook to a linear member with the hook being hooked to a linear member in the normal manner. . . .

The Examiner finally rejected this and other claims as being indefinite. The Board had affirmed the Examiner’s rejection on the basis that the preamble fails to recite elements described in the body of the claim, such that it is unclear whether the linear member is being claimed.

On appeal, Larsen argued that “[t]he total concept of the invention and context of the claims in this case is so clear, simple, and easily understood that, realistically, no one who is not dwelling on some artificial and arbitrary legal ‘test’ would have any confusion as to the fact that the claim is directed only to the combination of the loop and not the clothesline to which the hook is being fastened.” In re Larsen, slip op. at 5. The Federal Circuit agreed with Larsen and reversed the Board. The Court concluded that an omission in the claim’s preamble of a critical element of the claim does not in this case render the bounds of the claims so indeterminable as to be indefinite, since the body of the claim so clearly defines the structure to include a “linear member.” Thus, the Federal Circuit reversed the Board’s indefiniteness rejection, noting that it was unable to perceive “the ambiguity that seemed so apparent to the PTO.” Id. at 4.