IP Alerts

May 8, 2014

On May 6, 2014, in In re Packard, the Court of Appeals for the Federal Circuit held that the standard for indefiniteness to be applied by the U.S. Patent and Trademark Office (USPTO) during patent examination is not necessarily the same as that to be applied by a reviewing court after issuance of the patent. The court held that the USPTO may issue an indefiniteness rejection if it “identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear” and if the applicant fails to address such lack of clarity. At present, the indefiniteness standard that applies to issued patents is whether the claims are “insolubly ambiguous.” 

Packard filed a patent application that the USPTO rejected for indefiniteness. On appeal to the Federal Circuit, Packard argued that “insolubly ambiguous” should be the standard for indefiniteness, both at the USPTO and for issued patents.   

The court first indicated that it need not address the question of what standard should be applied to issued patents, noting that the Supreme Court is considering this question. (See Fitch Even’s earlier IP Alert.) The court observed that the examination standards to be applied to patent applications were not necessarily the same as the standards applied to issued patents.

Turning next to the standard to be applied to pending applications, the court held that a rejection for indefiniteness is “well-grounded” if it “identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention” and if “thereafter the applicant fails to provide a satisfactory response.” The applicant response “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.” If the applicant does not provide a satisfactory response, the USPTO can properly reject the claims for indefiniteness. The court reasoned that this approach stems from the fact that patent examination is commonly “an interactive process” that “regularly involves substantive interaction with applicants, relying on their distinctive incentives and abilities to enhance understanding and to help the USPTO ensure compliance with statutory standards.”

The requirement for definite claim language “is not a demand for unreasonable precision,” held the court. Further, this requirement, “applied to the real world of modern technology, does not contemplate in every case a verbal precision of the kind found in mathematics.” Rather, the court continued, “how much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.”

Turning to the Packard application, the court held that Packard had not addressed many of the indefiniteness rejections made by the examiner and otherwise did not adequately address the remaining indefiniteness rejections. Although Packard did provide commentary on the specification, he did not focus on the claim language or propose claim amendments. Because Packard had the opportunity to clarify the claim language, but did not do so, the USPTO was justified in maintaining the indefiniteness rejection.

Judge Plager issued a concurring opinion in which he detailed the history of the “insolubly ambiguous” standard, and in which he argued that the Federal Circuit has not applied this standard consistently. He further spelled out certain policy reasons behind the standards for definiteness of patent claims.  

The Packard case is significant for patent applicants facing a claim rejection for indefiniteness. It is not certain whether the pending Nautilus case will affect the Packard holding, or if the Supreme Court will apply a similar standard to issued patents. Fitch Even attorneys are monitoring the Nautilus case and will report when the Court has issued its opinion.

For more information on the Packard case, please contact Joseph H. Herron, the author of this alert.

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