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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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In re Packard - Standard for Indefiniteness Before the USPTO

In re Packard (Fed Cir. May 6, 2014)

In this case, the Federal Circuit considered the question of "what standard for indefiniteness should the U.S. Patent and Trademark Office ("USPTO") apply to pre-issuance claims?"  The applicant argued that the PTAB used the wrong standard for indefiniteness, finding the applicant's claims "contain[] words or phrases whose meaning is unclear" instead of the "insolubly ambiguous" standard.  The Federal Circuit affirmed in a per curiam opinion.

It is notable that this decision comes on the heels of the U.S. Supreme Court hearing oral argument in Nautilus, inc. v. Biosig Instruments, Inc.  But, the Federal Circuit reached its conclusion in In re Packard "without regard to the proper formulation of the judicially-applied indefiniteness standard that may be appropriate for post-issuance assessment of indefiniteness."

The patent application at issue related to a coin change holder.  The Examiner issued a final rejection on lack of written description, indefiniteness, and obviousness, noting that several claim limitations failed to meet the requirements of 35 U.S.C. 112(b) because they lacked an antecedent basis or were otherwise unclear.

The applicant appealed to the PTAB, which affirmed the written description and indefiniteness rejections.  For indefinitness, the PTAB used the standard in MPEP 2173.05(e), specifically "[a] claim is indefinite when it contains words or phrases whose meaning is unclear."  On rehearing, the PTAB did not modify its decision.

On appeal to the Federal Circuit, the applicant argued that the standard used by the PTAB for determining indefiniteness was incorrect and differed from the "insolubly ambiguous" standard used by the FederalCircuit.  The applicant also argued that the "insolubly ambiguous" standard would be more favorable to his case than the standard used by the PTAB.

The court stated:

We conclude that, 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 satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.


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).

Judge Plager wrote a concurring opinion that provided a history of the law on indefiniteness as well as policy options behind the interpretative issues in claim construction disputes, which is quite interesting reading for those so inclined.

This decision has already generated, and will continue to generate, much discussion.  For example, Hal Wegner notes that "The most serious aspect of Packard from the standpoint of consequences to the patent examination system is the proposal for a two-part, piecemeal examination of the issue of indefiniteness under what is now 35 USC 112(b).  If Examiners follow the guidance of the per curiam opinion, they can pic any - or every - term in a claim which, in vacuo, may appear to be indefinite and put the burden on the applicanct to explain where in the specification - or elsewhere - the term meets the statutory requirements of Section 112(b)."  See here (posted with permission from the author).  Courtenay Brinckerhoff explains that "the Federal Circuit decision here does not appear to break much new ground, because the burden-shifting framework it supports is common to every issue that examiners raise. Examiners make rejections, applicants respond, and the process continues until agreement is reached on allowable claims, the applicant appeals to the PTAB, or the applicant gives up and abandons the application."  See here