Indefiniteness at the PTAB

By Dennis Crouch

Ex parte Dan, 2014 WL 343818, Appeal No. 12-8847, APN 10/715,910 (PTAB 2014)

Monsanto’s patent application covers the growth of plant cells on a bed of lipoic acid in order to facilitate a GM transformation. Monsanto’s Examiner found the term “explant” indefinite under 112(2). The Board reversed that appeal – finding that the patent application has provided sufficient explanation of the term. In particular, the application had indicated is purpose as “a method for genetically transforming a plant cell, tissue or other suitable explant” and that the best conclusion from that statement is that explant are inherently comprised of cells.

The Board’s reasoning here (penned by Judge Jenks) makes clear that clear that the examiner’s burden in showing indefiniteness is quite high. The Board writes:

We find that Appellants have the better position. “The standard of indefiniteness is somewhat high; a claim is not indefinite merely because its scope is not ascertainable from the face of the claims.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). Rather, “[a] claim is indefinite if, when read in light of the specification, it does not reasonably apprise those skilled in the art of the scope of the invention.” Id. Here, the Specification provides that the disclosed method is suitable for “transforming a plant cell, tissue or other suitable explant [material] and regenerating a transformed plant therefrom.” (Spec. 3, ll. 12-13.) Thus, the Specification refers to cells or tissues in relation to explant material, which is consistent with the use of the term explant in the art. Accordingly, we agree with Appellants that explants are essentially a collection of cells. As such, the transformation of an explant would involve transforming the underlying cells.

For its precedential support, the Board calls to the 2003 Amgen decision. The reliance on Amgen highlights a big difficulty with our current system of patent law jurisprudence – the direct application of infringement litigation case law on patent prosecution standards. Amgen was a decision where a patent had already been examined and issued and was being challenged in court. At that stage (infringement litigation), a court has no power to rewrite claims to and the strong presumption of validity associated with issued patents suggests that the proper approach is to have a “somewhat high” standard of indefiniteness. The story is completely different for cases pending before the USPTO. The vast majority of patent applicants amend their claims during the patent prosecution process in order to clarify loose language and avoid prior art. During this stage, the PTO should be given a strong hand to ensure that applicants meet the statutory requirement of “pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” Here we’re not talking about increasing or decreasing the scope of the patent, but rather requiring precision so that the boundary of the claims is recognizable. The nice thing about forcing this at the application stage is that applicants will have a full opportunity to amend their claims in a way that results in a valuable (but definite) patent.

Now, one result here is that Monsanto did end up clarifying in its argument that an explant is made-up of cells. In court, Monsanto would likely be bound by that argument. But the problem with having prosecution-based definitions is that they are difficult and expensive for a third-party to uncover.

Final point, the Board may have been willing to allow somewhat loose language here because it went-on to affirm a different rejection – that the claims were invalid as obvious.

24 thoughts on “Indefiniteness at the PTAB

  1. … and yet we once again see the dilatory, far-too-common effects of:

    1. Allowing others (whether examiners, the board, courts, or infringers) to constrict the scope of that which was invented … through the acquiescence to our opponents normally-easily-rebuttable selection and characterization of one or more of the claims being “representative.”

    Never agree that any of your claims are representative. Never.

    2. Not independently arguing for the separate patentability of each and every claim.

    3. Not arguing each and every ground for non-obviousness .. for each and every claim you fairly and reasonable can.

    Though unfamiliar with this particular art field, I’ll bet Monsanto had plenty of valuable invention scope readily available for obtaining claims for.

    Scope which — due to estoppel — is likely now lost for good … regardless of whether or not they succeed in court.

    1. Though unfamiliar with this particular art field, I’ll bet Monsanto had plenty of valuable invention scope readily available for obtaining claims for.

      You’d lose that bet.

      through the acquiescence to our opponents normally-easily-rebuttable selection and characterization of one or more of the claims being “representative.”

      You can sometimes get away with being an obnoxious head-in-the-sand axxhole when you’re arguing with an Examiner but it rarely helps you in court when there’s an invested party there to call you out on your b.s. in front of the judge.

      Most dependent claims fall with the independent claim. Being a d*ck and pretending that every new limitation you chucked somehow represents an inventive insight that isn’t in the independent claim just makes you look like a f00l 99% of the time.

      1. “You can sometimes get away with being an obnoxious head-in-the-sand axxhole when you’re arguing with an Examiner but it rarely helps you in court when there’s an invested party there to call you out on your b.s. in front of the judge.”

        Fighting against being “representative-claim” scope-restricted is neither obnoxious nor baloney.

        That you believe otherwise only serves to demonstrate that you are seriously and materially short-changing your clients.

        One can hardly imagine how much patentably scope you’ve cost them over the years.

        “Most dependent claims fall with the independent claim. Being a d*ck and pretending that every new limitation you chucked somehow represents an inventive insight that isn’t in the independent claim just makes you look like a f00l 99% of the time.”

        Most dependent claims only fall with their independent claim … not due to laws, rules, regulations, or other authorities … but instead only because “take the quick and easy route and don’t rock the boat” folks like you are unwilling to invest the time and energy necessary to fight and obtain such claims for their clients.

        Every claim is separately patentable if and until proven otherwise.

        Sadly for your clients, you’ve just told them that their inventions aren’t worth fighting for.

        Reason enough to keep your identity a secret.

        I wouldn’t want my clients to know who I am either.

        And your profanity and name-calling is both unnecessary and unprofessional.

  2. I don’t think your summary accurately explained what the examiner was pointing to as being a problem. She wasn’t indicating merely that the term “explant” was indefinite by itself. Rather, she indicated that claim 15 recited transforming an explant, while its parent claim 1 recited transforming a plant cell. I’m not certain, but it sounds like there may have been two problems: one, it’s difficult to tell in claim 15 what the actual steps of the method are, because it doesn’t indicate how the additional steps in claim 15 extend what’s claimed in claim 1; and two, the BRI of “explant” and the BRI of “plant cell” are different, and so it isn’t clear how (or if) the two steps are related.

    Personally, I think the examiner also didn’t do a great job of explaining this. But one might also note that all of her obviousness rejections were affirmed.

    On a side note, I find it rather obnoxious that the PTAB copies claim 1 into their decision, describes it as being “representative of the claims on appeal”, and then goes on to decide a matter relating to a claim that had limitations that were clearly not present in claim 1. Sure, we could all go look it up in PAIR to find out what claim 15 said, or, you know, they could just put it in there for us and save everyone else some trouble.

    1. plurality Sure, we could all go look it up in PAIR to find out what claim 15 said, or, you know, they could just put it in there for us and save everyone else some trouble.

      I’ve noticed this “stinginess” generally in a lot of PTO papers. I think they rely on the fact that the claims can be found somewhere in the file wrapper (usually in a paper provided by the Applicant) but it’s always irritating when they aren’t reproduced in the paper where they are being discussed (even as an Appendix).

      1. Because the courts should be spending more time, money and resources, duplicating what is readily available for sheer convenience sake….

        Um, no wait.

        1. the courts should be spending more time, money and resources, duplicating what is readily available for sheer convenience sake….

          I see it like this.

          Which is easier?

          A public agency has the information right in front of it and they can simply copy and paste the information into the document they’re preparing for public dissemination

          versus

          A member of the public (whom the agency serves) is presented with that document on a blog and in order to understand precisely what is being discussed, the member needs to access a different website, type in the password, type in identifying information for the file, search through that file for the additional document that has the information they are looking for, then download that additional document.

          Seems like it’s easier for the agency to just make sure it copies the relevant claims into their decision. Then again, these are patent claims we’re talking about. It’s not as if the claims are ever really very relevant to the “actual law” being discussed … isnt’ that right, anon?

        2. Idk about that anon, at worst it would be a quality control mechanism. If they copy and paste in the claim then we can all be sure they reviewed the correct claim and will know if we need to request rehearing or not if they do the wrong one.

        3. “Because the courts should be spending more time, money and resources, duplicating what is readily available for sheer convenience sake….

          Um, no wait.”

          Yeah I hate it when courts actually quote language from previous decisions and then cite to it. I mean come on, pick one or the other boys. We have google now, should you really be telling us both WHERE to find something and WHAT it said? Are we children that have to be led by the hand?

          The Supreme Court – just trying to pad their word count for posterity’s sake.

  3. A minor nit “Here we’re not talking about increasing or decreasing the scope of the patent

    Um, yes, that (the degree of scope) is still very much in play.

    Why say otherwise?

      1. Clarity and scope are inexplicably intertwined.

        Necessarily, sharper clarity means the line keeping things out of the scope of the patent is brighter.

        I just did not see the reason the comment was included.

    1. Lets take the term “explant” and assume that the examiner was correct — we don’t know if the term means (1) a bunch of cells; (2) a bunch of cells with additional extracellular material; (3) a bunch of biologic material; or some combination of these three.

      The examiner wasn’t asking the patentee to narrow the scope of its invention, but only to define the term “explant” so that we know the scope.

      1. Why you’d bother trying to make an example for anon is beyond me D, he’s obviously incapable of understanding that in the majority, though not all, of cases, a clarifying amendment simply clarifies what the applicant wanted the claim’s scope to be in the first place. Anon is not mentally capable of grasping this and he isn’t likely to magically become capable from someone presenting a perfectly reasonable example.

        1. And yet, even in the Professor’s example, the scope of (1), (2), and (3) are clearly different. By clarifying you may in fact narrow the scope – and you most definitely change the scope.

          My post at 2:18 stand correct.

          1. “And yet, even in the Professor’s example, the scope of (1), (2), and (3) are clearly different.”

            They’re all clearly different ya re re. The question is, which of them did the applicant intend?

            “By clarifying you may in fact narrow the scope”

            Only if applicant didn’t know what he meant in the first place or else he didn’t intend anything solid in the first place and wanted the claim specifically indefinite from the get go. In which case, his chickens are coming home to roost where they should have been roosted initially. Oh noes! Oh noes! And, keep in mind, that limited situation of narrowing the scope only occurs only in the minority of cases even when it does occur.

            And it is for those reasons that your limited post at 2 18 may well be correct but your overall position that you’ve stated many times to the effect that we are (or would be) mucking about with applicant’s entitlement overmuch by forcing a narrowing amendment all the time is not.

  4. ” … prosecution-based definitions … are difficult and expensive for a third-party to uncover.” They are???

    1. They certainly can be. Worse case scenario is the long prosecution history where a particular claim term is relied on repeatedly by the applicant who responds to various rejections by asserting that “the reference doesn’t use term Y in the manner used by applicant.” Depending on which “theory” of claim construction is being applied, to “determine” the meaning of Y one needs to understand how the term is used in each of the cited references. Occasionally it will be impossible to reconcile the usages in the various references and the “disclaimed” usage asserted by the applicant. Impossible … but not necessarily “insoluble.” MOO-HOO-HOO-HAW-HAW-HAW!!!!

  5. “During this stage, the PTO should be given a strong hand to ensure that applicants meet the statutory requirement of “pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.””

    One does not “gift” a “strong hand”, or “give” a “strong hand”. To have a strong hand the PTO must grow one itself.

    Though I know what the author refers to (review bodies allowing those below to take a strong stance by upholding their decision to rejection such on review) the author should also understand that there is no substitute for personal will when exercising power over another person.

    “Here we’re not talking about increasing or decreasing the scope of the patent, but rather requiring precision so that the boundary of the claims is recognizable.”

    Well you say that but occasionally there is no way that anyone involved in the prosecution can see that would give the same scope while making the claim more precise such that the boundary is more recognizable.

    On the topic at hand though it is difficult for me to tell what is going on since they didn’t show us claim 15. I’m going to guess though that it is fine since the examiner’s reasoning seems a bit odd.

  6. Dennis, I agree in full with your argument. The Courts construe claims conservatively when there is doubt. The PTO must resolved doubt against the applicant during the initial ex parte prosecution or in reissues to clarify claims. Donaldson en banc and Morris are both on point.

    During reexamination, however, I still maintain as I have long maintained that BRI has no place with an issued patent. The claim construction with issued patents must be consistent and the same. The any amendment for clarification purposed risks intervening rights. There is real harm done to the patentee for no sufficient reason.

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