Federal Circuit Implements Low Standard for Prima Facie Indefiniteness Rejection

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.

77 thoughts on “Federal Circuit Implements Low Standard for Prima Facie Indefiniteness Rejection

  1. Having been a common practitioner and sometime inventor for over 45 years, I am dismayed at the focus of discussion. Inventions are different than the language we use to describe inventions. If so much of human invention is about how it relates to the physiology of a human, why are human related terms now considered functional and not structural? Do we need to define mathematical precision? Isn’t it implicit that a handle has a human hand in mind?

    I have a dog in this race and all I am seeing is a lack of clarity. Certainly the definition of ambiguity before issuance and after issuance are different. And yes, re-examination proceedings have blurred the issue. What is the inventor to do in what appears to be a hostile environment?

  2. An interesting and sort of sad case on the facts. I assume that Thomas Packard filed as a pro se applicant and got himself caught in this wringer because he did/does not understand the linguistics of application and claim drafting. Does anyone know anything about his experience as a patent applicant? I wonder how he managed to be represented by an up town GP firm in this appeal. What is the back story on this case?

    Way back when I was an examiner, we were encouraged to help out inexperienced pro se applicants at least until they proved themselves to be un- educable in either grammar or patent law principles of novelty and obviousness. In this case of a disarmingly naive coin holder, I wonder if the examiner simply lost patience with Mr. Packard’s inability to understand antecedent basis and written description and gave up on him.

    It is unfortunate that such a trivial invention should become the focus of issues of real import such as the differences expressed in this opinion between pre-issuance and post-issuance section 112 determinations re written description and indefiniteness. Imagine SCOTUS taking this up and really creating a hash of it. Let’s hope it ends here with this somewhat confused set of opinions. It would have been so much better had the claims simply been affirmed as obvious.

    1. “In this case of a disarmingly naive coin holder, I wonder if the examiner simply lost patience with Mr. Packard’s inability to understand antecedent basis and written description and gave up on him.”

      If you pull the file wrapper, take note that both of his appeal briefs and his reply brief are written in ALLCAPS.

      65 pages or so written in ALLCAPS.

      While not dispositive, this may give some indication.

  3. This is one of those issues where, looking in from Europe, one has a feeling of deja vu.

    Ever since the EPC was written, in 1973, there has raged throughout Europe a debate about whether the patentability requirement of Art 84 EPC, that the claims be “clear”, should also have been included in the EPC as a ground on which to dispute the validity of a duly issued claim.

    Needless to say, lawyers will always find arguments that a duly issued claim is less than 100% clear. So, once you allow validity attacks based on lack of clarity, you will be plagued by such attacks, both well-founded and ill-founded, that’s for sure.

    However, if you deny clarity attacks on Claims after issue, the consequence will be that the PTO will take very seriously its duty to police the issue of clarity for as long as the claim has nor yet issued. For Applicants at the EPO, this can be quite tedious and irritating. But most disinterested observers think it the lesser of two weevils (to borrow from Patrick O’Brien). Also SCOTUS now, it seems.

    1. Max, setting aside the assiduous examiner, the failure to police in court combined with the nose of wax benefits of ambiguity seems to incent applicants to try for the maximum ambiguity in all cases.

      What happens in oppositions, pray tell?

      1. Ned, to answer your question about oppositions, let me tell you what happened in the days when US lawyers prosecuted at the EPO (during the PCT International Phase).

        In the early days, EPO Examiners would raise objection, that the claim in view lacked clarity. This did not go down at all well with the US lawyer prosecutors, who could see from the communications from the EPO Examiner that the first language of said examiner was not English. Who are you, they thought, to tell me what is or is not “clear”.

        Consequence: a dialogue of ever-increasing rancor.

        Then the EPO had a better idea: first construe the claim in the broadest reasonable way. Second, make novelty and obviousness objections to it.

        The same approach is used by Opponents at the EPO. It is very effective. Applicants in Europe who deliberately make their claims ambiguous are the authors of their own ultimate misfortune.

        Note that the effectiveness of such attacks on validity, post-issue, is enhanced by the absence in Europe of any Doctrine of File Wrapper Estoppal. So, the patent owner cannot defend the validity of the claim by pointing to the wrapper and arguing from that basis, for a narrower construction of the claim. If you want to stand on that narrower interpretation, there is no alternative but to write it into the claim, explicitly. And in so doing, Bingo, you render the claim clear.

        Thoughts?

        1. So, the patent owner cannot defend the validity of the claim by pointing to the wrapper and arguing from that basis, for a narrower construction of the claim. If you want to stand on that narrower interpretation, there is no alternative but to write it into the claim, explicitly. And in so doing, Bingo, you render the claim clear.

          Thoughts?

          That’s basically where the stand-off occurred in this case, MD, and the applicant lost. All applicants are now on notice that they need to be prepared to amend to resolve ambiguity, not simply state on the record their beliefs about the clarity of the term and their preferred definition. Just as is the case at the EPO, one’s mileage may vary depending on whether the Examiner is well-trained, asleep at the wheel, or on some drug-fueled quest to destroy the livelihood of the applicant and the very fabric from which our modern civilization is so wondrously hewn.

          1. That’s basically where the stand-off occurred in this case, MD, and the applicant lost.

            That is a horrible over-read of the present situation in which it looks like a pro-se individual simply did nto know which way was up.

            I suggest you read again the per curiam opinion that correctly states that (solid) argument is one way to overcome the prima facie case – apparently, this applicant did not even bother with that.

            1. a pro-se individual simply did nto know which way was up.

              Or maybe this individual was simply following his sooper dooper smart attorney’s advice to “appeal, appeal, appeal!”

        2. Max, I still see no real impediment to drafting claims that are as fuzzy as possible to take advantage of the ambiguity — if the claim allegedly reads on the art, one argue a narrow construction. If it does not, the broader.

          1. Not sure I follow you Ned. In Europe, the scope is what it is, determined by the Tribunal, not you. Thus, in disputed proceedings years down the line, “arguing for” the particular scope you happen today to want and need will get you nowhere.

            Perhaps you think you can cure the ambiguity by a post-issue amendment? Dream on!

            1. Afterthought. The Angora cat of Mario Franzosi, notorious in Europe these past 30 years or so. Perhaps, Ned, you have never heard of it. Let me explain.

              Liken your claim to an extremely long-haired Angora cat, which can intimidate by making its hair stand on end, to appear to challengers at least double its true size. That’s how scary an ambiguous claim can be. Such a claim can be very impressive to your average dog, juryman or jurywoman.

              But now imagine that the validity of the claim is put in issue. Its owner throws a bucket of water over it and points out that the animal is hard, fit, and very very small. So small in fact that the prior art gets nowhere near it. That’s right, isn’t it? That’s how difficult it can be, to knock out the cat.

              Are you still wondering what Europe’s got against claims that are drafted deliberately to be ambiguous?

            2. determined by the Tribunal, not you

              …sounds a lot like the suggestion a certain posted made that the Office should in the due course of examination conduct a Markman-style hearing and put on the record what the claim language is construed to mean. If the applicant disagrees, then the applicant can put their meaning on the record and clarity is achieved pre-grant, eh?

              Of course, this option already exists as nothing would stop the Office from immediately adopting this examination technique. Well, almost nothing. You do have to have workers that could actually do their Fn jobs…

    2. once you allow validity attacks based on lack of clarity, you will be plagued by such attacks,

      OMG. Arguments! How horrifying.

      It seems to me that a “plague of arguments” is a trillion times better than the plague of junky, ambiguous but nevertheless enforceable claims that we’d all be faced with if we continued on with the terrible “insolubly ambiguous” standard. Particularly when that “plague of arguments” is just one of many other plagues that we pay judges to listen to.

      if you deny clarity attacks on Claims after issue, the consequence will be that the PTO will take very seriously its duty to police the issue of clarity for as long as the claim has nor yet issued.

      Do you have any evidence to support this prediction of yours? What’s the underlying logic exactly? The PTO “will take very seriously its duty” … or else what?

      1. MM the only “evidence” I have is my perception that in recent years EPO Examiners have become fussy about clarity where, hitherto, they were not.

        In recent years, not coincidentally, the world has turned, from a perception that patents are good, to a perception that they are bad. That’s all the EPO Examiners needed, to fuel their determination to cap the flow of trivial or otherwise undeserving claims.

        Let us not lose sight of the presumption of validity. It is relatively easy in Europe to get a court to revoke a duly issued claim. You need just a preponderance of evidence. I suspect that the need for indefiniteness attacks to be available is higher in that one jurisdiction in which clear and convincing evidence is needed before any obviousness attack can succeed.

        1. MD the world has turned, from a perception that patents are good, to a perception that they are bad. That’s all the EPO Examiners needed

          How do EPO Examiners detect the world’s “perception” about the goodnessor badness of patents, generally? Do they use an algorithm?

          I’d like to see a poll. My impression is that most people do not have a problem with the concept of patents per se. But they do have a problem with junky patents, regardless of who is asserting them or why. And there are simply a lot of more junky patents out there now relative to ever before.

          For example, I read somwhere that HP is trying to patent a method of making a map using data about the location of streets. Oh but wait! The data is obtained by taxi drivers. Changes everything, doesn’t? That’s a totally different method than previous methods of using data to create a map, at least from a technological point of view. Right?

          1. MM please see my 11.2.2.1 below. To be more precise, I think there is more motivation at the EPO, these days, to distinguish between junk and quality. Probing “clarity” more determinedly is part of that.

            1. MaxDrei,

              Your aim of higher quality is likely to go over Malcolm’s head, as he is one that bought into the mantra of quality being Reject Reject Reject that the USPTO attempted to adopt under the Dudas administration.

            2. To be more precise, I think there is more motivation at the EPO, these days, to distinguish between junk and quality.

              These days as opposed to when? When did this alleged increased focus on clarity first become evident to you? Seems to me the EPO has been pretty consistently in the attention paid to clarity and verbatim support for claim terms for many years.

              When did you first notice this increased “motivation”?

      2. “MM the only “evidence” I have is my perception that in recent years EPO Examiners have become fussy about clarity where, hitherto, they were not.”

        Yeah I have to say from the actions that I see that issue from the EPO they sure are.

        1. Thanks for that, 6. I think EPO uses Art 84 (clarity) as a probe, to find out whether or not the subject matter of the claim under examination is (to use MM’s word) “junky” (as opposed to “quality”). For me, it is an effective and worthwhile probe. But then, I’m biassed aren’t I?

  4. “The short per curiam decision is interesting in the way that it looks like an administrative law decision …”

    The good professor finds the mark again.

    1. I think “based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution,” misses the mark. Practitioners by law write patents to those skilled in the art. Discoveries are patentable if they are not obvious to those of ordinary skill in the art. Two quite different standards. Every time practitioners dumb down descriptions, say by objects of the invention, we get whacked, as in providing “motivation.”

  5. Judge Plager is somewhat of a hypocrite. He voted for In re Donaldson Co., Inc., 16 F.3d 1189, 29 U.S.P.Q.2d 1845 (Fed. Cir. 1994), a case that overruled In re Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957), and In re Arbeit, 206 F.2d 947, 99 1194*1194 USPQ 123 (CCPA 1953), allowing claims written in means plus function form to literally read on the prior art. Problem with §112(b)? Not to worry!

    As I said before, the ABA IP section strongly disagreed and voted for repeal of §112(b) precisely because it allowed to claims to be worth for word identical each other, let alone read on the prior art. These claims cannot particularly point out and distinctly claim the invention because one has to root through the specification to figure out what the corresponding structure is, how much of it is corresponding, and a whole lot more, just to figure out the scope of the invention. And all the time, the claim literally reads on the prior art, and may be word for word identical with claims in other patents claiming different inventions.

    At one time I considered asking all the patent attorneys and law firms that worked for me to include in every patent application we filed a generic claim describing every element that traditionally appears in our company’s products in means plus function format. In this way, that generic claim would be certain to have an element that corresponded to the invention. According the Donaldson, that would be sufficient to “particularly point out and distinctly claimed invention.” What a joke.

    There is no mention in the current opinion by Judge Plager of In re Donaldson. That case is indefensible, and he knows it.

    1. the ABA IP section strongly disagreed and voted for repeal of §112(b) precisely because it allowed to claims to be worth for word identical each other, let alone read on the prior art. These claims cannot particularly point out and distinctly claim the invention because one has to root through the specification to figure out what the corresponding structure is, how much of it is corresponding, and a whole lot more, just to figure out the scope of the invention. And all the time, the claim literally reads on the prior art, and may be word for word identical with claims in other patents claiming different inventions.

      Interesting points, Ned. This seems like a problem that could be easily resolved by requiring applicants who rely on means language (or similar functional language) to point out the specific passages in the supporting description where the corresponding structure is identified. Simultaneously, the patent databases should be updated (as Dennis has previously suggested?) to hyperlink the claim text to the relevant passages (and likewise link any defined terms to their definitions in the supporting description).

      1. LOL – go ask your Congressman then to change the actual law to support what you want.

        As it is currently, the use of functional language in claims is perfectly acceptable – even outside the realm of 112(f).

        (hint: pay attention in the decision as to how many times the judges reference the notion that claims are to be understood by the person having ordinary skill in the art to which the invention pertains)

        1. anon, but you do see the problem of using MPF at the point of novelty, and then distinguishing art based on the specification? The average reader of the patent will have no clue what has been patented because one cannot tell from the claims. On its face the patent appears very broad, but actually is quite a bit narrower because of the construction clause. A lot of times executives don’t know that.

          Furthermore, how can any patent attorney given reliable opinion on the scope of the patent in such situation? There’s corresponding structure, and some of it may have been argued to distinguish the prior art. But if other art is asserted, and there is corresponding structure that in some detail may be used to distinguish that art, how can one reliably say that that detail is not sufficient?

          Anybody and everybody who actually thinks about this for more five minutes will recognize that means plus function claims with the construction clause that are used to claim the invention with the novelty occurring in the specification and not in the claims are inherently indefinite, the worst possible of all claims that one can put into a patent from the point of view of clarity of scope. [And of course, §112(f) is entirely unnecessary if one is claiming old elements, and its construction clause arbitrarily limit the scope of claims unnecessarily – although the courts are coming around on this issue.]

          I argued long and hard to the AIPLA that we should repeal §112(f), but was unsuccessful. But others who listened to me did persuade the ABA IP section. I can only hope that eventually enough people who are really truly interested in sound patent law, recognize that the statute needs to be repealed.

          1. Ned,

            What is this “average reader” that you are referencing? Why are you straying from the law as written? (yes, the latter question is rhetorical).

            Your PON is a canard Ned.

            Can functional language lead to a claim being indefinite?

            Sure.

            Can non-functional language lead to a claim being indefinite?

            Sure.

            You seek to make a distinction that was wiped out in the 1952 Act. Even Frederico noted such – as I have shared your own source and his words to show.

            because one cannot tell from the claims.

            That is simply not true. Functional language and non-functional language are both read from the perspective of a person having ordinary skill in the art to which the invention pertains, AND in light of the specification.

            Both functional language and non-functional language are illuminated with what is written in the specification.

            There is no more “not in the claim” with either type of language – leastwise to the legal entity known as PHOSITA.

            Furthermore, how can any patent attorney given reliable opinion on the scope of the patent in such situation?

            Just as one would with non-functional language that is informed by the specification, so too with functional language. These are legal documents Ned – that fact does not change because “an executive” chooses to read a patent claim in any particular way.

            For example – even you recognized in the previous thread that “effective to” seemed ‘good enough’ – for a particular art field. I also supplied the case Orthokinetics to show that 112(b) was satisfied with “dimensioned to.” If tomorrow a brand new car comes out with a radically different B pillar, is the current claim indefinite?

            Throughout ALL of this you seem unable to realize the difference between breadth and indefiniteness. Throughout ALL of this you seem unable to recognize that language – be it functional language or non-functional language is permissible throughout the claim – even at PON. Your dependence on “structure” can be easily seen as reflected in your warped view of the statutory category of method. You continue in our conversations to artificially constrain yourself to an improper view that there are only three “real” statutory categories of the “hard-goods” type. It is evident in your writings that you continue to think that “methods” is but a sub-tier category permitted only as a way of protecting getting to something that would fall into a hard goods category.

            You intimate that you are interested in “sound patent law,” and yet you continue to plod in your antiquated belief system that is decidedly unsound.

            1. I do not support the repeal.

              I see no reason to repeal an optional method of claiming. I do not see the boogeyman that you see. I do see ALREADY PRESENT IN THE LAW the permissible use of functional claim language as permitted in 112(a) and 112(b) that would remain unaffected by a repeal of 112(f).

          2. anon, OK, then.

            1. Is 112(f) necessary? Anon, no.

            2. Is the construction clause proper way of construing any claim — incorporating corresponding structure into the claim? Anon, no.

            3. Does anon use 112(f). No. No patent attorney today uses 112(f) because of 1. and 2.

            4. Does anon support repeal? No.

            Anon, your reluctance to repeal given this logic tells me you think really believe that 112(f) is necessary.

            1. 1. “necessary?” is not the right question. Never has been.

              2. ? this statement appears unconnected to anything we have been discussing.

              3. False. You make this statement completely out of the blue and unfounded. While the use has clearly diminished over time (Prof. Crouch occasionally posts the trend), you statement here is not only false on its face, it goes against any logical view that you could take from my comments. Since I do NOT support a repeal, I logically support keeping the claiming technique as an on-going option. Your flatly false statement is thus not supportable by any stretch of the imagination.

              4. True. But so what? The rest of your ‘logic’ is badly twisted. You simply cannot jump from my statement of wanting to keep an optional way of writing claims to ANY notion that I think that there is a “necessary” element to that option.

              What exact philosophy are you so strenuously attempting to have me advocate?

            2. anon, patent attorneys that use §112(f), with this narrow construction clause, must perceive some do so for some reason.

              What reason could it be?

            3. They like the option.

              Tell me Ned – do you use 112(f)? Why (or why not)?

              And regardless, your errant post at 9.1.1.1.2 and my reply should not so easily be hidden. Why exactly did you feel the need to so butcher the conversation? Why was it SO important to you to attempt to place those words in my mouth?

        2. anon, “As it is currently, the use of functional language in claims is perfectly acceptable – even outside the realm of 112(f).”

          May I point out that the courts are now construing any claim that is wholly functional as governed by 112(f). They are not, as you think, construing 112(f) as optional.

          May I ask you again, if you think that functional claiming is OK, why do you not support repealling 112(f)? It makes no sense.

          1. Until you see how warped your logic is in the exchange of comments at 9.1.1.1.2 and 9.1.1.1.2.1, nothing I can say will open your eyes.

            This is completely a “you” issue.

    2. “Judge Plager is somewhat of a hypocrite”

      Not really. He’s able to see the controversy and nonsense that has since been stirred up due to the insolubly ambiguous standard. I mean, the ussc just took the issue on up. The cafc, for all its faults, has come to jesus moments when the supremes intervene. See all the obviousness decisions right before KSR issued. Hilarious. Absolutely hilarious.

      1. The cafc, for all its faults, has come to jesus moments when the supremes intervene.

        LOL – sure – just ask Alice.

  6. Shout out to D in footnote 9, page 9 of the concurrence. I have to wonder if all the comments might also have been read.

  7. This passage from United Carbon (317 U.S. 228, 236 (1942)) sounds like something that could pop up again:

    The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is
    foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field. Moreover, the claims must be reasonably clear-cut to enable courts to determine whether novelty and invention are genuine…. An invention must be capable of accurate definition, and it must be accurately defined to be patentable

    A couple points worth noting. (1) Note the final tie-in back to subject matter eligibility — the seamless web. All the big patent statutes relate to each other because they all reflect the same fundamental policy considerations.

    (2) The passage in bold seems to me an interesting acknowledgement of the fact that if an invention is not distinguished stucturally from prior art inventions then the patent fails to encourage innovation (at least innovation of the sort that patents were intended to protect). Rather, it simply closes off that particular field of endeavor to all parties except the patentee who (ironically) never reduced the new functionality to practice or who is incapable of even understanding how that reduction could be achieved.

    1. (1) Note the final tie-in back to subject matter eligibility — the seamless web. All the big patent statutes relate to each other because they all reflect the same fundamental policy considerations.

      LOL – note the failed government argument on the “WHATEVER” spin by Malcolm and his hints at purposeful conflation. See Prometheus, 9-0 baby.

      1. note the failed government argument

        As everyone knows, the failed government argument junk like Prometheus’ junk should be tanked under 103 was predicated on the PTO using a judicially-created doctrine imported from 101 into 103.

        Thanks for playing, though.

        1. Left out a word:

          As everyone knows, the failed government argument that junk like Prometheus’ junk should be tanked under 103 was predicated on the PTO using a judicially-created doctrine imported from 101 into 103.

          Apologies.

    2. (2) The passage in bold seems to me an interesting acknowledgement of the fact that if an invention is not distinguished stucturally

      Funny – not see the word “structurally, let alone the words “structurally only” at all.

      1. An important part of the Nautilus case was that there was no requirement to define claimed inventions structurally, even for apparatus claims. In fact means plus function claims were perfectly viable until court made law dictated recording all possible equivalents into the “written description.” That made for corporate hundred page boring, redundant applications with hundreds of claims and dozens of inventors.

        Inventors didn’t cause this calamity or calumny. An invention is always a bit different from the language used to describe it. But when practitioners can’t describe inventions with reference to the human body, then what? Is a “handle” structural or functional?

  8. I love how the USSC seems to believe (from the oral args) that the standard should be the same pre- and post issuance. Whereas the federal circuit seems to be of the belief that, at the least, they may be different. And at the most that the standards are certainly different.

    1. the USSC seems to believe (from the oral args) that the standard should be the same pre- and post issuance

      I didn’t get that impression. I think they were asking the questions they asked because they understood the different roles and functions being played by the agency versus the courts who review the granted patents for ambiguity. The Supremes seemed aware of the key fact (or were made aware of the fact) that it’s possible to rewrite the claims during examination.

      It’s also important, I think, to recognize that applicants are always going to argue that one skilled in the art will understand the claims to mean [insert applicants preferred understanding here]. It’s the PTO’s job to identify ambiguity that will present itself to skilled artisans who are not the applicant and, unless there is some truly clarifying language in the supporting description, the PTO needs to stand its ground and force the amendment.

      1. Yeah some nice juicy case that will make sure to reinforce that the PTO should force the amendment would be nice, at the very least in terms of procedure.

        1. Why would you need a case to do what you should be doing NOW under the law?

          Sounds like a) you are not doing your Fn job or b) you want some judge to write new and different patent law in the first instance to make your widdle job easier.

          Which is it? Incompetent or lazy?

          1. “Why would you need a case to do what you should be doing NOW under the law?”

            I don’t. But many old timers around this joint probably will. Change of all the old people in the office doesn’t happen in a day anon. It doesn’t happen in a month. Maybe not even in several years for some things.

            “Sounds like a) you are not doing your Fn job or b) you want some judge to write new and different patent law in the first instance to make your widdle job easier.”

            Well yes, it sounds that way because you’re a pscyhopath. Though no, neither a or b are what I intended to convey in my post. I’m sure you’ll be sure to not accept correction to your perception however (sociopathy due to pscyhopathy) and continue to think you were right and are the only one that is right (ocpd). And that’s ok.

            1. Though no, neither a or b are what I intended to convey in my post

              I suggest that you then say what you mean.

              That is, unless you just don’t care about how you come across…

              (and hey, this is not about me in the least – why do you want to make it out like it is?)

          2. Incompetent or lazy – That is refreshing, usually it is, “incompetent or conniving,” to the practitioner’s detriment.

  9. What on earth would compel a person to spend so much money and waste so much time arguing with the PTO about some very reasonable rejections to the manner in which this person chose to describe their … coin purse?

    Some people have nothing better to do with their money and time, I guess.

    That said, Plager’s concurrence was very thoughtful and well-written. It’s always reassuring (and occasionally refreshing) to see Federal Circuit viewing patent policy through the lens of the vast majority of the public who does not (and never will) set foot in the Great Patent Casino, rather then simply catering to the insatiable needs of the wanna-be excluders, each of whom seems to believe that the entire system exists solely for their personal benefit.

    I had one minor quibble with this attempt at bone-throwing by Plager on page 10:

    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. Nor could it do so in a patent system that actually works, in practice, to provide effective protection
    for modern-day inventions.

    Assuming that the term “modern technology” applies to “technology developed in 2014″, Plager could more accurately have written something like this: “The requirement does not contemplate in every case a verbal precision of the kind found in mathematics, although we recognize that such precision can certainly be required when describing modern technology against a background of tens of millions of prior art publications and patents describing what is possible with math-intensive technologies, e.g., new computing methods and the like.”

    1. “What on earth would compel a person to spend so much money and waste so much time arguing with the PTO about some very reasonable rejections to the manner in which this person chose to describe their … coin purse?”

      Dude the guy is clearly somewhat insane.

  10. ““make the congressionally created examination process work.””

    Well said. And we usually do an ok job of it despite things sometimes going a bit awry.

  11. Is there some rule of style for articles about patent cases asserting that the subject Patent number, Application number, and/or claims should NOT be mentioned or identified in any way?

  12. From Plager’s concurrence: With regard to terminology, the casual use by practitioners, including counsel in this case, of “specification” when what is meant is actually the “written description” is incorrect, though widely practiced. The statutory term “specification” includes both the written description and the claims. The use of the broader term “specification” when what is meant specifically is “written description” adds to verbal confusion as well as the potential for thought confusion. Importantly, there are no statutory requirements as such governing the adequacy of something called a “specification,” while there are specific statutory requirements governing both the “written description” and the “claims.” The late honored and beloved Judge Giles Rich, one of the principal architects of the 1952 Patent Act, decried the profession’s constant misuse of these terms.

    LOL! Poor old “beloved” Judge Rich. He obviously didn’t get the memo that if you want people to use specialized terms correctly, you should choose meaningful language for those terms. Not only was Judge Rich spectacularly short-sighted but he also was a poor writer. Nevertheless, he remains “beloved” for reasons that will forever remain mysterious to those who never met him or who find many of his so-called “contributions” to patent law dubious, at best.

    1. With regard to terminology, the casual use by practitioners, including counsel in this case, of “specification” when what is meant is actually the “written description” is incorrect, though widely practiced. … The use of the broader term “specification” when what is meant specifically is “written description” adds to verbal confusion as well as the potential for thought confusion.

      Umm… if it’s us practitioners who are using the terms casually and misusing them, why does the USPTO e-filing system EFS-Web have us identify the written description as a “specification” and upload it separately from the “claims”?

      1. Yeah it isn’t just you guys “misusing” the terms. Obviously they’re swapped around in common use now. Whether Rich et al. wanted them to be used differently in the 50′s is another matter. But then, compared to back then nearly every aspect of patent law is soundly turned on its head.

        1. The problem with the term “written description” to describe something that does not include the claims is that claims are the quintessential example of a “written description” of an invention.

          If Rich (or whoever) wanted to create more useful terminology, he could have coined a term like “supporting description” instead. Then we’d have the “claims” and the “supporting description” for the claims and, I believe, far fewer instances of people being confused about what the terms refer to.

          1. That’s kind of true. And yeah I don’t really care what they wanted to call stuff if they’d have simply been more clear in the statutory outlines it would have been fine.

    2. “He obviously didn’t get the memo that if you want people to use specialized terms correctly, you should choose meaningful language for those terms. ”

      No kidding.

      “Not only was Judge Rich spectacularly short-sighted but he also was a poor writer.”

      Dude I read a paper of his the other day and what is hilarious is that he advocates soundly, on his own behalf, against positions he would later take on the bench. And the language he used… not only “old-timey” but also rather of the sort of poor writing to convey what he wanted to convey. The man’s career appears, after reading that paper, to, at least in large part, be a big ol comedy of errors. And I mean that in a most generous sense.

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