how definite must a claim be during patent prosecution - by michael shimokaji

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© Michael A. Shimokaji, 2014

The contents of this article represent the opinions of the author and not those of the

author’s law firm or clients.

HOW DEFINITE MUST A CLAIM BE DURING

PATENT PROSECUTION

The US Supreme Court in Nautilus v. Biosig, is considering the

standard of review for claim indefiniteness – in a post-issuance circumstance,

i.e., after the patent issues.

The Federal Circuit, in In re Packard (May 2014), has addressed this

issue, but in the context of pre-issuance, i.e., while the patent application is

being prosecuted. The Federal Circuit explained that pre and post issuance

require different standards of review.

35 U.S.C. Section 112(b) requires that claims are “particularly pointing

ut and distinctly claiming” the invention. In Packard, the Patent Trial and

Appeal Board (“Board”) found the claims indefinite according to the Manual

of Patent Examining Procedure – “when it contains words or phrases whose

meaning is unclear”. The Board rejected the applicant’s argument that the

standard is “insolubly ambiguous.”

The Federal Circuit said:

“[W]hen the USPTO has initially issued a well-grounded rejection that

identifies ways in which language in a claim is ambiguous, vague,

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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 went on to explain that it could decide this case without

regard to the standard for post-issuance circumstances being decided in

Nautilus.

More explanation by the Federal Circuit was given in terms of how

definite a claim must be:

[T]his requirement is not a demand for unreasonable precision. The

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, how much clarity is required necessarily

invokes some standard of reasonable precision in the use of language

in the context of the circumstances.

In referring to Georgia-Pacific v. US Plywood, the Federal Circuit concluded:

"[P]atentable inventions cannot always be described in terms of exact

measurements, symbols and formulae, and the applicant necessarily

must use the meager tools provided by language, tools which

admittedly lack exactitude and precision. If the claims, read in the light

of the specifications, reasonably apprise those skilled in the art both of

the utilization and scope of the invention, and if the language is as

precise as the subject matter permits, the courts can demand no more."

PRACTICE POINTER:

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As the applicant correctly pointed out in Packard, “insolubly

ambiguous” would be a standard more favorable to the applicant. But a much

broader, and perhaps more vague, standard is used during prosecution.

The applicant’s down fall in Packard may have been the lack of an

adequate response/amendment to the examiner’s rejection on indefiniteness.

That suggests that during prosecution it might be better to amend rather than

just argue the clarity of claim language.

how definite must a claim be during patent prosecution - by michael shimokaji

Law