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May 11, 2014

Double Standard of Indefiniteness

The CAFC has long maintained that granted claims are definite under §112(b) unless "unsoluably ambiguous." On May 6, the CAFC decided something different with regard to definiteness during prosecution. They could have waited, as the Supreme Court will decide, within a month or so, how claim definiteness should be construed. In re Packard (2013-1204), a CAFC panel declared that a prosecution claim is indefinite if an examiner says so, sui generis, without consideration of the specification. This is contrary to black-letter law, and, recently, the CAFC's own ruling in Energizer Holdings v. ITC (CAFC 2006) ("The definiteness inquiry 'focuses on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification'").

In re Packard (2013-1204) precedential; Judges O'Malley, Plager and Taranto (per curiam)

Indefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an issued patent. See Exxon Research & Eng'g v. United States, 265 F.3d 1370, 1380 (Fed. Cir. 2001). It makes good sense, for definiteness and clarity as for other validity requirements, for the USPTO initially to reject claims based on a well-founded prima facie case of lack of clarity (in its several forms) based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history. Then, if the applicant does not adequately respond to that prima facie case, to confirm that rejection on the substantive basis of having failed to meet the requirements of § 112(b). Furthermore, we can reach that conclusion and decide the present case without regard to the proper formulation of the judicially-applied indefiniteness standard that may be appropriate for post-issuance assessment of indefiniteness, a matter currently under review by the Supreme Court. See Nautilus, Inc. v. Biosig Instruments, Inc., 715 F.3d 891 (Fed. Cir. 2013), cert. granted, 82 U.S.L.W. 3195 (U.S. Jan. 10, 2014) (No. 13-369).
As the statutory language of "particular[ity]" and "distinct[ ness]" indicates, claims are required to be cast in clear--as opposed to ambiguous, vague, indefinite-- terms. It is the claims that notify the public of what is within the protections of the patent, and what is not. See, e.g., Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876); United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).
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. Rather, how much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances. See Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.2d 124, 136 (2d Cir. 1958) ("[P]atentable inventions cannot always be described in terms of exact measurements, symbols and formulae, and the applicant necessarily must use the meager tools provided by language, tools which admittedly lack exactitude and precision. If the claims, read in the light of the specifications, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits, the courts can demand no more.").
Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO, upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection.
Mr. Packard's "arguments focus on what is contained in the disclosure, whereas the indefiniteness to which [§ 112(b)] is applied is in the language of the claims."

Posted by Patent Hawk at May 11, 2014 11:34 PM | § 112