June 2014
PTO May Reject Claims as Indefinite If Not as Reasonably Precise as the Circumstances Permit
| Judges: O’Malley, Plager (concurring), Taranto (per curiam) |
| [Appealed from Board] |
In In re Packard, No. 13-1204 (Fed. Cir. May 6, 2014), the Federal Circuit affirmed the Board’s rejection of all pending claims of Thomas G. Packard’s (“Packard”) U.S. Patent Application No. 12/004,324 (“the ’324 application”) as indefinite, holding that the PTO may reject preissuance claims as indefinite if not “as reasonably precise as the circumstances permit[].” Slip op. at 12.
The ’324 application covers a coin change holder. The examiner rejected the claims as indefinite, explaining that several claim limitations lacked an antecedent basis or were otherwise unclear, but Packard failed to adequately respond. The Board affirmed the rejection under the review standard set forth in MPEP § 2173.05(e) that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” Id. at 5 (alteration in original) (citation omitted).
On appeal, the Federal Circuit rejected Packard’s challenge to the indefiniteness standard applied by the Board and his argument that a determination of indefiniteness was governed by the Court’sthen-applicable (now overruled by Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (U.S. June 2, 2014)) “insolubly ambiguous” standard. The Court, addressing the question as one of first impressions, held that the PTO, after initially issuing a well-grounded indefiniteness rejection, may properly reject a claim based on language that is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention” when the applicant fails to provide a satisfactory response. Slip op. at 7.
“At the same time, this requirement is not a demand for unreasonable precision. The requirement, applied to the real world of modern technology, does not contemplate in every case a verbal precision of the kind found in mathematics. Nor could it do so in a patent system that actually works, in practice, to provide effective protection for modern-day inventions.” Slip op. at 10.
The Court derived its holding from a combination of the PTO’s examination function under 35 U.S.C. § 131 et seq. and the substantive standard of 35 U.S.C. § 112(b). First, the Court recognized that Congress tasked the PTO with ensuring that issued patents comply with the statutory requirements, and provided for examination to be an interactive process between the examiner and applicants, relying on the latter’s distinctive incentives and abilities to help the PTO ensure compliance with statutory standards. Thus, the Court reasoned, it made good sense, for claim definiteness and clarity, for the PTO initially to reject claims based on a well-founded prima facie case of lack of clarity and to confirm that rejection under § 112(b) if the applicant does not adequately respond. The Court also noted that it could reach this conclusion and decide the case without regard to the proper indefiniteness standard for issued patents, a matter (at the time) under review by the Supreme Court in Nautilus.
The Federal Circuit next addressed § 112(b)’s requirements for “particular[ity]” and “distinct[ness].”
Id. at 10 (alterations in original). The Court reasoned that since claims serve to notify the public of what the patent protects, “claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” Id. Yet, the Court recognized that for the patent system to work in practice, the level of clarity required necessarily invokes some standard of reasonable precision of language in the context of the circumstances. Thus, the Court concluded, the PTO is obliged to test whether the claims utilize language as reasonably precise as the subject matter permits to apprise one skilled in the art of the utilization and scope of the invention, and “to demand [a] persuasive response[] on pain of rejection.” Id. at 10-11.
Applied to the present case, the Court concluded that the examiner, having ample grounds, set forth a variety of ways in which the claims were imprecise, confusing, or not understandable, to which Packard did not adequately respond. Because Packard had an opportunity to bring clarity to his claim language, the Court affirmed.
Judge Plager joined the per curiam opinion, but wrote a separate concurring opinion to address directly the grounds presented by the parties. Judge Plager, recounting the complex history of court-applied indefiniteness standards, identified two arguably controlling tests, including one based on the “insolubly ambiguous” phrase Packard claimed must be applied to his claims. Agreeing with Packard that the Board did apply a different, lower-threshold standard for indefiniteness, Judge Plager nevertheless believed that such a standard was uniquely applicable to the preissuance situation. Relying on a detailed statutory and policy analysis, Judge Plager concluded, in agreement with the per curiam Court, that there was no legal obstacle to the PTO interpreting the applicable indefiniteness standard for examination purposes, and, under that standard, the Board correctly found Packard’s claims indefinite.
