In re Packard (Fed. Cir. 2014)
In a long-awaited decision, the Federal Circuit has affirmed the USPTO’s indefiniteness rejection of Thomas Packard’s claims under 35 U.S.C. § 112(b). However, the court refused to determine whether the “insolubly ambiguous” test is the proper standard for judging the indefiniteness of pre-issuance claims. Rather, the court merely held that a proper rejection by the USPTO (prima facie case) need not follow that standard:
We conclude 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 satisfactory response by the applicant 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. On the facts before us, this holding suffices to uphold the rejection that occurred here.
The short per curiam decision is interesting in the way that it looks like an administrative law decision – finding that the USPTO has been tasked with the job of examining patent applications and must be given leeway to “make the congressionally created examination process work.”
The USPTO must be able to make the congressionally created examination process work so that it fulfills its purpose of producing patents whose claims meet the statutory standards. We earlier approved a procedural mechanism for the USPTO to use in doing this, which we refer to as the “prima facie case.” See In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984). “In the prosecution of a patent, the initial burden falls on the PTO [examiner] to set forth the basis for any rejection.” Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007). The USPTO thus 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 with evidence and/or argument.” Id. . . .
The same approach to making the examination process work is an appropriate one for addressing the question of indefiniteness.
Here, the court does identify important differences between indefiniteness issues during prosecution (pre-issuance) as compared with post-issuance indefiniteness. In particular, because pre-issuance claims can be easily amended, it makes sense to have a system that encourages fixing claims before it is too late. Here, rather than addressing that issue through the indefiniteness standard, the court focuses on using process to provide flexibility.
We have elsewhere noted that indefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an issued patent. See Exxon Research v. US, 265 F.3d 1370 (Fed. Cir. 2001). It makes good sense, for definiteness and clarity as for other validity requirements, for the USPTO initially to reject claims based on a well-founded prima facie case of lack of clarity (in its several forms) based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history. Then, if the applicant does not adequately respond to that prima facie case, to confirm that rejection on the substantive basis of having failed to meet the requirements of § 112(b).
Of course, the legal standard of indefiniteness is currently being challenged in the Nautilus case now pending before the U.S. Supreme Court. Nautilus, Inc. v. Biosig Instruments, Inc., 715 F.3d 891 (Fed. Cir. 2013), cert. granted, 82 U.S.L.W. 3195 (U.S. Jan. 10, 2014) (No. 13-369). A decision in Nautilus is expected in June 2014.
Looking at the particular facts here, Packard ignored a number of indefiniteness rejections and thus, the examiner’s rejections will stand:
The opinion included Judges O’Malley, Plager, and Taranto.
Judge Plager also filed a masterful concurring opinion that provides a more full explanation of the law of indefiniteness, the problematic shorthand of “insolubly ambiguous”, and a direct analysis of Packard’s claim terms. More on Judge Plager’s opinion in a later post.