In re: David Walter

Docket No. 2016-2256

August 21, 2017


Brief summary: Board decision on indefiniteness of the term “block-like” affirmed because, e.g., it “is a term of degree, without objective criteria in the patent’s intrinsic record for establishing the scope of the limitation.”

Summary: Mr. Walter appealed PTAB decision following ex parte reexamination (requested by Mr. Walter) that all claims of US 7,513,711 relating to artificial reefs for cultivating marine life lack adequate written description (WD) and are indefinite. During reexamination, Mr. Walter responded to a rejection based on various prior art references by amending “the reef’s claimed ‘support structure’ [to] ‘block-like’” and, “[r]elying on an expert declaration”, argued “the plain and ordinary meaning” of the phrase is “a ‘solid support structure made up of discreet [sic] pieces or ‘blocks’ which[,] when joined together in some manner, assemble into a complete structure or apparatus” and that this was not taught by the prior art references. The examiner disagreed and also rejected the claims for lacking WD and indefiniteness (“lacked reasonable certainty because Mr. Walter’s proposed construction conflicted with the dictionary meaning of the term ‘block’…[b]ecause the claimed ‘support structure’ did not contain flat sides, it could not be fairly described as ‘block-like’”). Before the Board, “Mr. Walter did not rely on the construction of ‘block-like’” presented to the examiner and argued the examiner erred in his obviousness and written description findings. The examiner maintained the rejections, finding the amended claims use “block-like” “in a way contrary to its plain meaning” and “is a term of degree, without objective criteria in the patent’s intrinsic record for establishing the scope of the limitation.” When the Board “inquired into the meaning of ‘block-like’…Mr. Walter responded in a variety of ways” and, when asked to clarify, “returned to his original stance”. The Board concluded “block-like” was indefinite “because the specification…uses the term in a manner ‘inconsistent with a proper understanding’ of the word ‘block.’” The FC panel explained that the Board construes the claims of an unexpired patent during reexamination proceedings under the ‘broadest reasonable construction’” (In re CSB-Sys., FC 2011), that the FC reviews the Board’s ultimate claim construction de novo (Teva, US 2015), that the Board’s construction is reviewed without deference when the intrinsic record dictates the proper construction (Wasica, FC 2017), and that indefiniteness is a question of law reviewed de novo (Biosig, FC 2015). And WD is reviewed for substantial evidence, which is that a reasonable mind might accept as supporting the conclusion (ULF Bamberg, FC 2016; Consol. Edison, US 1938). While the FC panel disagreed with “the Board’s implicit determination that a patent claim is indefinite because the specification uses a term differently from its dictionary definition”, it explained that “[t]he specification is ‘always highly relevant’” and “usually dispositive” (Phillips, FC 2005; Vitronics, FC 1996 (“If there is a conflict…the specification controls.”)) It found “block-like” to be indefinite as it “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention” (“Nautilus I”, US 2014) and is a term of degree without “‘objective boundaries’ with which to assess the term’s scope” (Interval Licensing, FC 2014 (“depening ‘on the unpredictable vagaries of any one person’s opinion’”); Amgen, FC 1991 (“nothing in the specification, prosecution history, or proper art provides any indication as to what range of [structures] is covered by the term”)). Thus, the Board decision on indefiniteness was affirmed, without reaching WD.

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