USPTO Will Continue to Apply Lower In re Packard Indefiniteness Standard During Examination

Wednesday, October 11, 2017

The USPTO Patent Trial and Appeal Board announced that it will continue to reject claims as indefinite under 35 U.S.C. § 112(b) when they contain words or phrases whose meaning is “unclear,” instead of applying the higher “reasonable clarity” standard established in Nautilus, Inc. v. Biosig Instruments, Inc. The Board noted that the lower standard better reflects the Office’s role in ensuring that claims are clear during examination and the ability of applicants to amend pending claims to address clarity issues.

The USPTO Patent Trial and Appeal Board has designated the decision in In re McAward, No. 2015-006416 (Aug. 25, 2017) as “precedential” with respect to the appropriate standard for assessing whether claims are indefinite under 35 U.S.C. § 112(b) during patent examination. The PTAB ruled that the “reasonable clarity” standard articulated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), will not be applied during examination. Instead, the USPTO will continue to apply the lower standard described in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014). Under that standard, an examiner may reject a claim as indefinite if the “metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.”

35 U.S.C. § 112(b) states that a patent specification must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” In applying this requirement, the USPTO uses the indefiniteness standard announced in In re Packard, where the Federal Circuit held that:

[W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).

751 F.3d at 1312. In Nautilus, the Supreme Court declared a different standard when  considering whether the claims in an issued patent were indefinite, and therefore invalid under § 112(b). The Court concluded that § 112(b) requires that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” 134 S. Ct. at 2129.

Regardless of the “reasonable clarity” standard set out in Nautilus,  the PTAB ruled in McAward that the lower Packard standard, combined with the USPTO’s practice of construing pending claims according to their “broadest reasonable interpretation,” serves to best ensure that allowed claims are definite at least because patent examination is ongoing, and applicant may freely amend the claims during this time:

The Office's application of the broadest reasonable interpretation for pending claims and its employment of an interactive process for resolving ambiguities during prosecution naturally results in an approach to resolving questions of compliance with § 112 that fundamentally differs from a court's approach to indefiniteness. To that end, the Office's approach effectively results in a lower threshold for ambiguity than a court's. The different approaches to indefiniteness before the Office and the courts stem not from divergent interpretations of § 112, but from the distinct roles that the Office and the courts play in the patent system. The lower threshold makes good sense during patent examination because the patent record is in development and not fixed, the Office construes claims broadly during that period, and an applicant may freely amend claims.

Slip op at 8 (citation omitted) (emphasis added).

Thus, the PTAB ruled that, despite the Supreme Court’s endorsement of a different standard in Nautilus, examiners should reject pending claims under § 112(b) when the “claim is indefinite when it contains words or phrases whose meaning is unclear.” See MPEP § 2173.02(I) (“rejection for indefiniteness is appropriate after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear”).