Indefiniteness Standard During Prosecution


In re Packard

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision upholding an examiner’s indefiniteness rejection under 35 U.S.C. § 102(b), invoking the standard from the Manual of Patent Examining Procedure (MPEP).  In re Packard, Case No. 13-1204 (Fed. Cir., May 6, 2014) (per curiam) (O’Malley, J., Plager, J., Taranto, J.) (Plager, J., concurring).

This is a case of first impression for the Federal Circuit and goes to the standard for indefiniteness to be applied by the U.S. Patent and Trademark Office (USPTO) when examining application claims.

The PTAB applied the standard set forth in MPEP § 2173.05(e), namely, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”  Packard appealed, arguing that the PTAB should have applied the “insoluably ambiguous” standard.

The Federal Circuit affirmed the PTAB, noting that the indefiniteness standard to be applied to post issuance claims, under the judicially applied indefiniteness standard, was (at the time of the decision) under review by the Supreme Court of the United States in Nautilus v. Biosig (IP Update, Vol. 17, No. 6.)

The Federal Circuit noted that the basis for an indefiniteness rejection during prosecution is different than that for the judicially applied indefiniteness rejection for issued patents because of the nature of granted patents and the presumption of validity, as well as to encourage applicants to correct their claims while they can be easily amended.

For an indefiniteness rejection during prosecution, the Federal Circuit concluded 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 Federal Circuit explained that procedurally, the approach to follow for an indefiniteness rejection at the USPTO is the prima facie approach.  The USPTO makes a prima facie case if it meets its obligation to explain adequately the shortcomings it perceives so that the applicant is properly notified and able to respond.  Once the applicant is so notified, the burden shifts to the applicant to rebut the prima facie case by providing a satisfactory response, which the Federal Circuit explained 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.

Here, the Federal Circuit found that the applicant did not respond adequately to the claim language problems.  The applicant ignored some entirely, and for others offered only brief explanations of what he thought certain material in the written description and figures showed.  The applicant did not focus on the claim language difficulties, nor did he propose clarifying changes or show why, on close scrutiny, the existing claim language really was as reasonably precise as the circumstances permitted.

Although the Federal Circuit prescribed ways an applicant may properly respond to shift the burden back to the examiner, no guidance is provided as to the standard used to determine if a response is deemed “satisfactory.”

Practice Note:  On June 19, 2014, Packard petitioned for a rehearing en banc, asserting that the Supreme Court decision in Nautilus v. Biosig calls for a single standard of indefiniteness. 


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Written by:


McDermott Will & Emery on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.