USPTO Can Apply Lower Indefiniteness Standard During Patent Prosecution: Federal Circuit | Practical Law

USPTO Can Apply Lower Indefiniteness Standard During Patent Prosecution: Federal Circuit | Practical Law

In In re Packard, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) rejection of applied-for patent claims as invalid based on indefiniteness. The court also approved the US Patent and Trademark Office's (USPTO) policy that an applied-for patent claim is indefinite if its meaning is unclear.

USPTO Can Apply Lower Indefiniteness Standard During Patent Prosecution: Federal Circuit

by Practical Law Intellectual Property & Technology
Law stated as of 06 May 2014 • USA (National/Federal)
In In re Packard, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) rejection of applied-for patent claims as invalid based on indefiniteness. The court also approved the US Patent and Trademark Office's (USPTO) policy that an applied-for patent claim is indefinite if its meaning is unclear.
On May 6, 2014, in In re Packard, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) rejection of claims in Mr. Packard's patent application as indefinite (No. 2013-2014 (Fed. Cir. 2014)). In a matter of first impression, the court upheld the USPTO's policy that a patent application claim is indefinite if its meaning is unclear, a lower standard than that used by federal courts to evaluate whether a claim is indefinite.
Packard's patent application claimed a coin change holder. The USPTO examiner rejected Packard's original claims on the following three grounds:
  • Lack of adequate written description.
  • Claim indefiniteness.
  • Obviousness.
After this rejection, Packard cancelled the original claims and substituted new claims 28 through 37. The USPTO examiner found the new claims invalid under the same three grounds. On Packard's appeal of the examiner's rejection, the PTAB:
  • Affirmed the examiner's written description and indefiniteness rejection.
  • Reversed the obviousness rejection.
On the indefiniteness rejection, the PTAB applied the standard in the Manual of Patent Examining Procedure § 2713.05(e) that a claim is indefinite "when it contains words or phrases whose meaning is unclear." Packard appealed the PTAB's decision to the Federal Circuit.
On appeal, the court accepted the USPTO's suggestion to first address the indefiniteness issue since it relates to all of the rejected claims and also implicates the written description rejections. The court affirmed the PTAB's decision on indefiniteness and approved the PTAB's standard for evaluating whether a claim is indefinite. The court explained that evaluating indefiniteness based on whether a claim's meaning is unclear makes sense during prosecution because an applicant can respond to the USPTO's rejection and clarify the claim's meaning. Here, Packard did not provide satisfactory responses to the USPTO's well-grounded indefiniteness rejections and instead:
  • Completely ignored some indefiniteness problems raised by the USPTO.
  • Offered brief explanations without focusing on the claim language or proposing clarifying changes.
The court also noted that the USPTO's indefiniteness standard is different from the standard applied to issued patents. Because the court held that the applied-for patent claims were indefinite, it did not address the written description rejection.
Judge Plager wrote a concurring opinion addressing Packard's additional arguments and explaining that the USPTO's indefiniteness standard is supported by significant policy concerns and the agency's unique role in the patenting process.