In re Thomas G. Packard


Docket No. 2013-204

O’MALLEY, PLAGER (concurring opinion), TARANTO
May 6, 2014

Brief Summary: Rejection of claims for indefiniteness by the USPTO is proper if it “identifies ways in which the language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the invention, and thereafter the applicant fails to provide a satisfactory response” (either amend the claims or persuasively explain why the language is not unclear).

Summary: The question addressed in this opinion is whether the USPTO should apply an “unlear” or “insolubly ambiguous” standard to its indefiniteness analysis during prosecution (35 U.S.C. § 112(b)). Mr. Packard argued it should use the “insolubly ambiguous” standard but the FC panel disagreed. On appeal to the Board after the examiner finally rejected his claims as indefinite, the Board affirmed the rejection, citing MPEP 2173.05(e) (“[a] claim is indefinite when it contains words or phrases whose meaning is unclear”)). The FC panel concluded that a final indefiniteness rejection by the USPTO is proper if it “identifies ways in which the language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the invention, and thereafter the applicant fails to provide a satisfactory response” (either amend the claims or persuasively explain why the language is not unclear). The opinion explained that this is consistent with the USPTO’s role in prosecution as set forth by Congress (e.g., to establish 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”. It also noted that the present case may be decided “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” (Nautilus, FC 2013, cert. granted Jan. 10, 2014). Further, the opinion explained that, “applied to the real world of modern technology, does not contemplate in every case a verbal precision of kind found in mathematics” but only “some standard of reasonable precision in the use of language in the context of the circumstances” (Georgia-Pacific, 2nd. Cir. 1958). And as in Halliburton (FC 2008), “the patent drafter is in the best position to resolve the ambiguity in the patent language, and it is highly desirable that patent examiners do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to solve the ambiguity in litigation.” In this case, the FC panel found that “Mr. Packard did not respond adequately”, ignoring some rejections entirely and providing only brief explanations regarding others. Thus, under “the MPEP standard propertly applied by the USPTO”, the Board decision was affirmed. Judge Plager’s concurring opinion explained why he believed the decision was correct but decided “on grounds not argued by either party.”

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