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.