December 2013

Looking Ahead

On December 4, 2013, the Federal Circuit heard oral argument in In re Packard, No. 13-1204, an appeal in which the applicant, Packard, challenged, inter alia, the indefiniteness standard established by the Board in Ex parte Miyazaki, 89 U.S.P.Q.2d 1207 (B.P.A.I. 2008).  In Miyazaki, the Board employed a “lower threshold of ambiguity” standard when reviewing a pending claim for indefiniteness than those used by postissuance reviewing courts.  Id. at 1211.  Here, Packard appealed the Board’s affirmance of the examiner’s rejections for indefiniteness under 35 U.S.C. § 112, ¶ 2.  On appeal, Packard contended that the Board had engaged in impermissible substantive rulemaking in Miyazaki and erred as a matter of law by applying Miyazaki’s “lower threshold of ambiguity” standard instead of the Federal Circuit’s long-established “insoluble ambiguity” standard for indefiniteness when rejecting the pending claims in Packard’s application.

Stay tuned to future editions of Last Month at the Federal Circuit to see how the Federal Circuit addresses the preissuance standard for claim definiteness.