CAFC Makes Sure Pre- And Post-Issuance §112 Indefiniteness Are Distinct In Anticipation Of Nautilus, Inc. V. Biosig Instruments, Inc. Decision By SCOTUS.

Michael Caridi | May 14, 2014

In Re Thomas G. Packard (2013-1204)

May 6, 2014

Panel:  O’MALLEY, PLAGER, and TARANTO, Per Curiam.  Concurrance by PLAGER.


Packard appealed an affirmed 35 U.S.C. §112 (b) rejection by PTAB on the basis that the Board had used an inappropriately strict standard of “unclear” in finding the claims indefinite.  Packard argued that an “insolubly ambiguous” judicial standard should have been applied.  The CAFC affirmed the PTAB with plenty of dicta that pre-issuance indefiniteness at the USPTO is distinct from post-issuance indefiniteness at the judicial level.


Packard sought a patent for a coin change holder of which claim 28 was the primary example:

28. I claim a small, thin, flat plane, rectangular change holding card and wallet/billfold or purse construction with the front top side of the cardcomprising three raised, straight, parallel, double flanged separators and two raised, straight, parallel, double flanged side edges and a raised side edge end thereby forming four parallel, side by side, flanged coin holding channels or rows of the same length and of different widths, one for quarters, one for dimes, one for nickels, and one for pennies, that are similarly blocked at one side edge by the raised side end edge with the other side of the channel/rows open except for small, fixed, flexible, partially moveable, rubber or plastic retainers that are attached to the topside and ends of the double flanged separators such that coins can be retained on the card and yet slide freely above the surface of the card and obliquely overlap as necessary within the channel/rows between the separators while the bottom, back side of the card is constructed with a wallet, billfold or purse extending from it.

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The examiner had rejected the claim under 35 U.S.C. §112(b) as indefinite.  Packard appealed to the PTAB.  In the course of affirming the examiner’s indefiniteness rejection, the Board applied the review standard set forth in the Manual of Patent Examining Procedure (“MPEP”) § 2173.05(e), namely, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”

Packard appealed to the CAFC asserting that the standard applied by the CAFC for determining indefiniteness of a term in a claim under 35 U.S.C. § 112(b) is governed by the phrase “insolubly ambiguous” and this standard is mandatorily applied. Further, Packard asserted a claim under this standard is not indefinite if any meaning can be given to the disputed term in the context of the claim.

The CAFC concluded:

…when 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).

The court emphasized the difference between indefiniteness issues which arise during prosecution and those that arise during litigation.  They stressed that during prosecution, the applicant has the opportunity to fix any ambiguity by amending the claims.  Contrary, in a litigation context, the courts are held to a presumption of validity in interpreting the claims which limits their ability to construe the claim language.  Thus the Court signaled that the USPTO should be free to apply a broader standard to help iron out any indefinite issues prior to obtaining a patent.  They compared the application of the indefiniteness standard of §112 rejections at the USPTO to the prima facie standard applied for obviousness under 35 U.S.C. §103.

We have elsewhere noted that 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).

They were also clear to differentiate their ruling from the impending decision on 35 U.S.C. §112 related to post-issuance indefiniteness.

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).

Still, the Court gave some guidance to curb any potential requirement of “unreasonable precision” by the USPTO.

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.

The USPTO, in examining an application, is obliged to test the claims for reasonable precision according to these principles.

Finally, the per curiam opinion noted that Packard had ample opportunity before the examiner to fix the §112 indefinite problems, but chose not to do so.

Because Mr. Packard had an opportunity to bring clarity to his claim language, we affirm the Board’s findings as to indefiniteness under the MPEP standard properly applied by the USPTO, the standard which we have here approved.

Plager’s Concurring Opinion

Plager provides a more in depth look at indefiniteness.  Starting with the Brook v. Fiske, 56 U.S. 212 (1853), he explores the origin of indefiniteness and culminates with the current situation leading to Nautilus.  He then reviews the various policy considerations surrounding “indefiniteness” breaking them into 3 categories of a sliding scale: (1) controlling weight to presumption of validity; (2) weighing Notice to the Public and presumption of validity and (3) full weight to the notice function.   Based on this sliding scale, he asserts that there is clear reason to have a different standard for indefiniteness pre- and post-issuance of a patent because the first (1) is clearly applicable only in a post-issuance case and the third (3) falls as the function of the USPTO to reach.  Thus, Plager concludes that the different standard applied by the USPTO from the Courts is to be encouraged and supported:

In my view (and that of the per curiam court), it is within the authority of the USPTO to so interpret the applicable standard. Further, it is my view that, as a policy matter, this court should support the USPTO in so doing. To begin with, I find nothing in the statutes that precludes the USPTO from adopting such guidance for the examiners and the Board.  Beyond that, no precedent of this court or of the Supreme Court addressing patent claim construction issues suggests that such a position on the part of the USPTO would be beyond its authority in the proper administration of the governing statutes.

The fact that this court has not yet seen fit to apply the same interpretive policy option to post-issuance cases as the USPTO wishes to apply to pre-issuance cases is no reason why the USPTO, given its unique and central role in the patenting process, should not be able to apply it in dealing with pre-issuance patent applications.

Take Aways

  • USPTO can apply a broader standard for indefiniteness under 35 USC 112(b) in a pre-issuance setting than the standard applied by the courts post-issuance where the presumption of validity applies.
  • Practically at the USPTO, patent applicants will likely have less success in attempting to traverse 35 USC §112(b) rejections without amendment to the claims.
  • Although the breadth of the Nautilus decision from the SCOTUS remains to be seen, the CAFC is positioning so that the impact on pre-issuance 112(b) issues may be minimal by validating a different standard for pre- and post-issuance indefiniteness.

Full Opinion

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