Wednesday, February 25, 2009

PTO Announces a New Test for Claim Indefiniteness

My first post is a "reprint" of an article I wrote a few months back from McDermott's IP Update. Below I discuss the most recent precedential opinion from the BPAI.

The Board of Patent Appeals and Interferences (the Board) announced a new standard for determining compliance with 35 USC § 112, ¶ 2 during examination of a patent application. In a precedential opinion, a five-member panel of the Board determined that a rejection under § 112, ¶ 2 for indefiniteness is proper if a claim has multiple “plausible” interpretations. Ex Parte Miyazaki, Appeal No. 2007-3300, (PTO Bd. App. and Interf. 2008) (Horner, APJ) (precedential).

Miyazaki filed a patent application claiming a large printer and various components of that printer. Miyazaki The examiner rejected various claims, asserting that recitations in the claims relating the height of the paper feeding unit and the sheet feeding area to a user’s height were unclear. appealed

In deciding the appeal, the Board considered an exemplary claim which recited (in part) as follows: “a sheet feeding area positioned at a height at which a user, who is approximately 170 cm tall, standing in front of the printer can set up a printing medium without having to bend substantially at the waist, wherein the sheet feeding area is positioned at the height when the printer is placed substantially at ground level.”

The Board focused on “sheet feeding area.” After reviewing the discussion of the sheet feeding area in the specification and the ordinary meaning of the terms “sheet” and “area,” the Board determined that the term was amenable to two plausible definitions. However, neither of these definitions made sense in view of the remainder of the claims. Thus, the Board concluded that neither the specification, nor the claims nor the ordinary meanings of the words provided any guidance as to what Miyazaki intended to cover. In a departure from prior precedent, the Board announced that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”

In support of its action, the Board cited the Federal Circuit’s suggestion in Halliburton Energy Servs. v. M-ILLC (see IP Update, Vol. 11, No. 2) that: “the task of determining whether that limitation is sufficiently definite is a difficult one that is highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area). We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.

In connection with its analysis of other, purely functional claims, the Board held that a claim drafted in purely functional language, without the appropriate “means for” language available under 35 U.S.C. § 112, ¶ 6, fails to meet the requirements of 35 U.S.C. § 112, ¶ 1 and is unpatentable. The Board relied for this proposition on the Supreme Court’s decision in Halliburton Oil Well Cementing Co. v. Walker.

Tuesday, February 24, 2009


Thank you for visiting BPAI Watchdog.

I started this blog as an outlet to comment on both precedential and non-precedential opinions of the Board of Patent Appeals and Interferences.

Check back in the coming days for what I hope is a flurry of posts on some recent decisions I find interesting.