Lower Standard Applies for Indefiniteness Rejection During Prosecution

image2The Board of Patent Appeals and Interferences (BPAI) has ruled that a lower standard applies for indefiniteness rejection under 35 USC § 112, second paragraph, during prosecution of a patent application than during litigation of an issued patent.  The first paragraph of section 112 requires that the claims of a patent application not be indefinite to those of skill in the art.  In other words, when one reads the claims of a patent, the words in the claims should not be unclear.

The Federal Circuit has held that claims are indefinite only if they are “not amenable to contruction” or are “insolubly ambiguous.”  Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted).  The court based this rule in part on the presumption of validity of issued patents.

The BPAI notes that just as two different standards are applied during claim construction, so also different standards should apply for indefiniteness.  Post-issuance claim construction attempts to determine the meaning of the claims based on the specification and prosecution history.  During prosecution, however, the PTO gives claims their broadest reasonable interpretation consistent with the specification.  This is because, during prosecution, the applicant has the ability to amend the claims.  The BPAI thus propounded the following standard for pre-issuance indefiniteness:

if a claim is amenable to two or more plausible constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.

In Ex Parte Miyazaki, the claims were directed to a large printer having a” paper feeding unit located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process.”  The Board held the claims to be indefinite because they fail to specify a positional relationship of the user and the printer to each other.  The claim does not recite whether the printer is located on the ground or a table or whether the user is standing on the ground or a stool or something else.

This case is another example of the courts or the PTO telling applicants to include more detail and more precision in their patent applications and claims.  When issued patents and claims are unclear, they can cause a great deal of uncertainty.  Many of the Federal Circuit’s opinions over the last ten years that seem to be cutting back on the scope of patents, are actually the court’s way of imploring applicant to include additional detail and precision.  In most cases, as much detail as possible should be included in the application.


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