Ex parte McAward – Testing Claims for Indefiniteness

In the following essay, Dr. David Longo discusses the PTAB’s indefiniteness decision in Ex parte McAward. The decision is important because it was recently made precedential by the Board. – DC

Guest Post by David M. Longo[i]

We have a statutory provision that requires “one or more claims particularly pointing out and distinctly claiming the subject matter” regarded as the invention.  35 U.S.C. § 112(b) (pre-AIA § 112, ¶2).  But how do we determine what constitutes “particularly pointing out and distinctly claiming”?  And how do we apply it consistently, regardless of whether we are in the midst of patent prosecution, litigation, or in one of the post-grant proceedings established under the AIA?  Unfortunately, the answers are not clear.

We typically refer to § 112(b) as constituting the “definiteness requirement,” the “definiteness command,” or the “definiteness standard.”  See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2128-2130 (U.S. 2014).  And, we refer to a claim that does not satisfy § 112(b) as being “indefinite” or “invalid for indefiniteness.”  See Interval Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1369-1372 (Fed. Cir., 2014).  However, as Judge Plager explained in his concurring opinion in In re Packard, “as a matter of legal terminology there is, under current law, no statutory reference to a definiteness requirement, nor a statutory provision that invalidates a patent or a patent claim for “indefiniteness”,” whether under § 112 or its predecessor, 35 U.S.C. § 33.  In re Packard, 751 F.3d 1307, 1319 (Fed. Cir., 2014).  Rather, the concept of definiteness/indefiniteness is a “judicially crafted law … regarding the standard for clarity of claims in an issued patent” in view of “the overriding policy considerations that claims must unambiguously define any invention over the prior art, and provide notice to the public….” Id., 751 F.3d at 1307, citing to Brooks v. Fiske, 56 U.S. 212 (U.S. 1853).

Before we can assess the “definiteness” of a claim, we must first attempt to interpret/construe the claim language.  Over time, more than one approach emerged for doing so, depending on whether the claims at issue were under examination or whether they were already patented.

On the one hand, the USPTO’s approach is that “[d]uring patent examination, the pending claims must be “given their broadest reasonable interpretation [“BRI”] consistent with the specification”” as they would be interpreted by a person of ordinary skill in the art.  M.P.E.P. § 2111 (emphasis added), citing to Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005, en banc).  BRI also applies to unexpired patent claims in an inter partes review (IPR) proceeding (affirmed by the U.S. Supreme Court in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S. 2016)), and in a post-grant review (PGR) proceeding (although this issue is being appealed to the Federal Circuit in Tinnus Enterprises, LLC v. Telebrands Corp., Appeal No. 2017-1726).

On the other hand, in litigation, “the basic principles of claim construction” provide “that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention….”  In re Packard, 751 F.3d at 1317, quoting from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005, en banc).

So, “[c]laim definiteness is intertwined with claim construction, and the broadest-reasonable-interpretation (BRI) standard used by the USPTO differs from the Phillips claim construction standard used during patent litigation in the federal courts.”  Tinnus Enterprises, LLC v. Telebrands Corp., Appeal No. 2017-1726, USPTO Brief at p. 13.  [TinnusTelebrandsPTOBrief] According to the USPTO, the U.S. Supreme Court approved of the difference in standards used:  “we cannot find unreasonable the Patent Office’s decision to prefer a degree of inconsistency in the standards used between the courts and the agency, rather than among agency proceedings.”  Cuozzo, 136 S. Ct. at 2146.

After interpreting/construing the claim language, the USPTO’s approach to assessing “definiteness” “requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.”  M.P.E.P. § 2173.02.  “The essential inquiry pertaining to this requirement is whether the claims set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity.”  Id., § 2173.02(II).  The USPTO acknowledges that making such a determination after applying a BRI “may effectively result in a lower threshold for ambiguity than a court’s determination.”  Id., § 2173.02(I), citing to In re Packard, 751 F.3d at 1323-24.  The USPTO reasons that “[t]he lower threshold is … applied because the patent record is in development and not fixed during examination, and the agency does not rely on it for interpreting claims.”  Id., § 2173.02(I), citing to In re Packard, 751 F.3d at 1325 (Plager’s concurrence).

In contrast, a court’s approach to assessing “definiteness” in litigation “require[s] that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”  Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (U.S. 2014) (emphasis added).  Here, the court may avail itself of the benefit of a completed and fixed prosecution history.

Note that both approaches have the word “reasonable” in common.  It appears, though, that the concept of what is considered “reasonable” is expanding as a function of time—along with the rest of the universe but without knowledge of a patent-equivalent to the Hubble constant.  We sense this expansion, and it gives us agita as we attempt to make sense of seemingly conflicting guidance from the USPTO, the Federal Circuit, and the U.S. Supreme Court.

Perhaps being sensitive to our collective anxiety, the USPTO went to great lengths to explain its approach in sustaining an indefiniteness rejection under § 112, ¶ 2 (pre-AIA) in Ex parte McAward (Appeal No. 2015-006416, Aug. 25, 2017, precedential).  (Four days later, in its brief intervening in Tinnus, the USPTO went to similar lengths to argue that its approach is also ideally suited for assessing indefiniteness during PGR.)  Or, perhaps it viewed the facts of Ex parte McAward as a textbook example of why the USPTO’s “lower threshold for ambiguity” is ideally suited for assessing whether claims “set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity” during the examination process.  M.P.E.P. § 2173.02(II).

In Ex parte McAward, the USPTO acknowledged that the BRI “standard differs from the claim interpretation standard used during patent litigation….”  Ex parte McAward, p. 7.  According to the PTAB, this is of no consequence, because the distinction was condoned in Cuozzo, and because “[i]t would be inconsistent with the role assigned to the [USPTO] in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid.”  Id., at 7-8 (internal citation omitted).  According to the USPTO, when BRI is applied in the interactive environment of prosecution to resolve ambiguities, it “naturally results in an approach to resolving questions of compliance with§ 112 that fundamentally differs from a court’s approach to indefiniteness.”  Id., at 8 (emphasis in original).

The USPTO’s main point in Ex parte McAward is essentially that the “different approaches to indefiniteness before the [USPTO] and the courts stem not from divergent interpretations of § 112, but from the distinct roles that the [USPTO] and the courts play in the patent system.”  Id. (emphasis added).  In McAward, the Board asserted that its “lower threshold” approach to claim interpretation during examination “makes good sense,” precisely because “an applicant may freely amend claims” in response to broadly interpreted claims.  Id., citing to Plager’s concurrence in In re Packard, 751 F.3d at 1325.  The Board contrasted this with a court’s approach in litigation, where there is presumption of validity, “simple amendments are impossible, the full prosecution record is available, and courts endeavor to adopt saving constructions.”  Id., at 9, citing to In re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir. 2008).

Extending this to “definiteness,” the Board acknowledged that “reasonable certainty” governs the “definiteness command” of § 112(b) for claims in issued patents.  Id., citing to Nautilus, 134 S.Ct. 2120, 2129.  But the Board asserted that Nautilus does not “mandate a change in the [USPTO]’s approach to indefiniteness in patent-examination matters in which … claims are interpreted under the broadest reasonable interpretation standard and an opportunity to amend the claims is afforded.”  Id., citing to Plager’s concurrence in In re Packard, 751 F.3d at 1323-1324.  According to the Board, the USPTO is also “justified in using a lower threshold for indefiniteness.”  Id., at 10, quoting the USPTO’s Brief as Amicus Curiae Supporting Respondent in Nautilus.  And, a court “should be particularly loath to disturb the settled distinction that the [USPTO] and the courts have recognized between the pre-and post-issuance contexts….”  Id. at 11 (internal citation omitted).

The Board then applied “the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., [a] claim is indefinite when it contains words or phrases whose meaning is unclear”  Id. (internal citations omitted).  Absent a “satisfactory response” from the applicant, “the USPTO can properly reject [a] claim as failing to meet the statutory requirements of § 112(b)” when “the language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention….”  Id. (internal citations omitted).  According to the Board, § 112 requires “that claims be written in clear and unambiguous terms,” which “necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.”  Id., at 12, citing to In re Packard, 751 F.3d at 1313 (emphasis added).

The Board considered the claims in Ex parte McAward within this framework.  The claim language at issue in the § 112 ¶2 (pre-AIA) rejection was “wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.”  The Board rightly called this claim language “unusual,” in that the claim does not further define the water detector’s structure or function, and instead “attempts to further define the water detector’s structure by the skill level required to install the water detector.”  Id.  The Board determined that the claim language “fails to provide adequate clarity to the required structure because the skill level of “an untrained installer or a homeowner” is ambiguous and vague, and thus, the meaning of a structure configured to be “reliably installed” by such an installer is unclear.”  Id.

It is worth mentioning that the applicant added this recitation and others by amendment in an attempt to overcome two separate anticipation rejections under 35 U.S.C. § 102(b), and a § 103(a) rejection.  The amendment language initially also included a requirement that the “plumber” be a “licensed professional plumber,” and that the “electrician” be a “licensed electrician.”  The applicant argued that the prior art reference “does not disclose the context” of the amended feature, and that it “does not do the same or any similar thing as that of the claimed invention.”  Applicant’s Amendment of Mar. 14, 2014, p. 7.  Of course, the Examiner responded with a 35 U.S.C. § 112 ¶2 rejection, asserting that the

limitation is unclear and indefinite since the claim language does not provide any structure to the apparatus or system that would allow it to be “configured” to function as described in the claims; as such one having ordinary skill in the art cannot determine the metes and bounds of the claimed subject matter.  Furthermore the limitations of “to not require the services of a licensed professional” can potentially be in violation of a region’s building and electrical codes and laws depending where the claimed invention could be potentially used.  The examiner suggests deleting these limitations since it does not appear to add patentable weight to the claim language other than explain that the device or system can be “easily installed”.  Office Action of May 30, 2014, pp. 3-4.

The Examiner’s rejection closely tracked the guidance in M.P.E.P. § 2173.02(II) and (III).  Yet there were several rounds of prosecution before the Appeal.  It is worth noting that an Examiner interview likely could have helped to clarify each side’s position early in the process and perhaps avoided some of the problems in this case.  See M.P.E.P. § 2173.02(III)(D), encouraging Examiners to initiate an interview to discuss BRI and definiteness, “potentially eliminating the need for the examiner to resort to making a rejection under [§] 112(b).”

On Appeal, the Board rejected the applicant’s argument that “the claims are directed to the simple, straightforward concept of a ‘do-it-yourself’ device installed by an amateur,” because the Specification did not “provide support for this definition.”  Ex parte McAward at 12-13.  Such a distinction “is insufficient to provide clarity to the claim language [requiring] the water detector to be configured to be “reliably installed” by the [homeowner].  A person having ordinary skill in the art would appreciate that a “homeowner” can encompass a wide range of people of all skill levels.  As such, the claim suffers from general vagueness and ambiguity.”  Id. at 13.  Even assuming the applicant’s “proffered understanding to be correct, the claim language of the “configured” limitation, when read in light of the Specification, fails to further clearly define the structure encompassed by the limitation.”  Id.  Therefore, because the applicant “failed to provide a satisfactory response that apprises us of error in the Examiner’s rejection,” the Board sustained the § 112 ¶2 rejection of the claims as being indefinite.  Id. at 15-16.

Lower threshold or not, I do not think that many would argue that the Board demanded unreasonable precision in its approach to the indefiniteness analysis in this case.  Such a clear case makes it easy for us to nod in agreement with the outcome.  It also makes it easy for the Board to argue that this case is a perfect example of why the USPTO’s “lower threshold for ambiguity” is ideally suited for assessing whether claims “set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity” during the examination process.  M.P.E.P. § 2173.02(II).  But it does not bring us any closer to addressing the perceived expansion of what is considered “reasonable” regarding “broadest reasonable interpretation,” “reasonable degree of clarity and particularity,” “reasonable certainty,” and “reasonable precision.”  Without some patent-equivalent to the Hubble constant, we continue to live with our agita.

= = = = =

[i]  David M. Longo is a partner at Oblon McClelland Maier & Neustadt LLP.  This post represents the thoughts and opinions of the author alone and not those of his firm.  It is intended to convey general information only and should not be construed as a legal opinion or as legal advice.

34 thoughts on “Ex parte McAward – Testing Claims for Indefiniteness

  1. So, because the USPTO uses BRI, this decision reasons that there is a lower threshold of ambiguity (higher standard for definiteness) in the USPTO. That seems to make sense in this case, but given the “unusual” nature of the limitation I wonder how generally applicable it is. In fact, in some cases, under a BRI standard, one could argue that definiteness in at least some cases should become easier (not harder) to establish.

    Consider the case of a claim that is rejected for indefiniteness for reciting molecular weight of 1,000 to 100,000 without specifying Mn, Mw, or some other method of determining it. The BRI would dictate that the molecular weight term could be measured by any standard known in the art at the time of invention, including Mw and Mn, and the examiner would be justified in finding any type molecular weight for prior art purposes.

    That interpretation of molecular weight under BRI is broad, because it covers all possible ways of determining it, but not necessarily indefinite–because breadth is not indefiniteness. One might argue that BRI should actually save the term from being indefinite because BRI dictates that the term covers all possible ways of measuring it.

    It seems fundamentally at odds to allow an imprecise BRI construction for 102/103, but BRI also dictate that the same term should have a very precise/narrow construction to be definite under 112.

    1. Did I read that right? Not only did Hillary in the DNC finance the “dossier,” but the Comey FBI agreed to pay for further opposition research

      during the campaign.

  2. Because it’s too funny not to share, enjoy this megadose of glibertarian silliness:

    Senator Rand Paul, a Kentucky Re pu bicon, last week introduced legislation that has captured the attention of science groups. Paul’s bill would require the addition of two people who are not experts in the subject matter under consideration in every federal peer-review panel. One of the people would be required to be “an expert in a field unrelated to the field of research under which the grant proposal was submitted.” This person would also be required to be “not professionally affiliated with any academic or research institution” at the present time and for at least 10 years. The second person to be added to every peer-review panel would “serve primarily as a ‘taxpayer advocate’ (defined as someone whose main focus is on the value proposed research delivers to the taxpayer).”

    What a great way to promote progress in science! Clearly we need less expertise, more clu e l ess ness and more input from people who are very very serious about the government wasting time and money. What could go wrong? The most important thing is to make sure that Venezuela has a different approach. Because Venezuela.

  3. Prosecutors should understand that obtaining claims such as the one under discussion does not serve the client’s interest whatsoever. In litigation, one has to prove every single claim limitation. How can one prove “wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption?”

    1. How can one prove “wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption?”

      Easy. You get two experts to argue what it means in front of a jury of twelve people. It only costs a few million dollars and wastes everybody’s time but, oh my goodneess, the satisfaction is priceless. You can practically feel the glowing warmth from the loins of the Founders’ skeletons as the perfection of their magnificent intentions is realized.

      1. If the Founders had your disposition and ideas then we’d be Venezuela before Venezuela. Keep fighting the good fight. Someone important is bound to be listening.

        1. No idea what you’re talking about Gary. You like to fondle the Founders and pretend your special, apparently. Very impressive! Follow your leaders and clutch that script tightly!

          “Venezuela”. Deep deep stuff.

          1. MM’s a big fan of venezuela. It’s the lefties prime example of “socialism done right”. You know, until other people’s money (and the state oil revenues) didn’t quite cut it anymore.

            Ven. “socialist” Gubmit: Opsie, everyone go back to the farms so you don’t starve! Nobody knows how to farm now? Too bad! Maybe whitey et al. will come your rescue, suckers! Now let me have another piece of cake!

    2. Ned, you remind us that “one has to prove”. But if proving is only to a “more likely than not” standard, is it in reality so very difficult?

      1. Well Max, every limitation in court becomes a battle royal. It is not simply a matter of presenting to experts to a jury. It is a matter of claim construction, discovery, depositions and the like. Every limitation leads to tremendous fights between litigating counsel. Every single one.

  4. The tl;dr version is “Applicant tried to distinguish over prior art with amendment defining invention by installation skill level rather than structurally. Board found such language ambiguous, vague, and indefinite.”

    The decision is precedential not because of its significance in determining a BRI “Hubble constant” but in order to foreclose against future similar claiming attempts.

    1. “Applicant tried to distinguish over prior art with amendment defining invention by [insert trendy abstraction descriptor du jour] rather than structurally. Board found such language ambiguous, vague, and indefinite.”

      The decision is precedential …in order to foreclose against future similar claiming attempts.

      Let’s see how this actually plays out. The smart defense attorneys will know what to do. But that doesn’t mean they’ll do it. And we all know why.

  5. wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.

    I rarely see a well-written indefiniteness rejection, but this language could be the poster child for indefinite claim language.

    1. this language could be the poster child for indefinite claim language.

      How does it compare with a term such as “copyright protection information”? What’s the “structure” of that?

      1. What is the single objective structure of a range of various chem units that merely “comprise” something – with NO actual single physical object explicitly covered by a claim?

        The point that you only too easily seem to miss is that claims cover a range of things and OFTEN that range is dictated by (gasp) function.

        You all too often let your feelings about one particular art field specifically get the better of you without realizing that your whining pretty much is nothing more than anti-patent whining.

        1. What is the single objective structure of a range

          “And thereupon ‘anon’ did jump the shark so high and so far that all around was heard the phrase: new olympic record.”

      2. What’s the “structure” of that?
        Do you have a point? 35 USC 101 allows patenting of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” What is the “structure” of a process?

        I claim “heating a liquid to above 150 F.” The liquid hasn’t changed its structure — are you implying that this is indefinite?

        While there can be some intermingling, there is a difference between limitations associated with “structure” and limitations associated with “properties.” Regardless, either are fair game for claim limitations.

  6. Just so nobody loses sight of the ball here, please keep in mind that terms like “licensed” are abstractions.

    Yes, they are also indefinite. That’s not a coincidence. That’s called “overlap.” That’s called “shared fundamental policy considerations underlying different parts of a cohesive statutory scheme”. That’s called “a seamless web”.

    And indefinite abstractions like “licensed” appear over and over and over again in the logic arts. But in that context the PTO somehow finds it very convenient to look the other way. Go figure.

    1. That’s called “a seamless web”.

      Actually your banality is called “whatever” and conflation and is the opposite aim of legal studies where differentiation and distinction between law sections is the desired state of knowledge – most definitely not your type of “Whatever.”

  7. The amendment language initially also included a requirement that the “plumber” be a “licensed professional plumber,” and that the “electrician” be a “licensed electrician.”

    The fact that this ever happened is as sure a sign as any that the US patent system is desperately ill.

      1. “Licensed” as a state of being … is not an abstraction.

        I doth license thee.

        How you feeling now? I know I feel better.

        LOL

  8. The Board contrasted this with a court’s approach in litigation, where there is presumption of validity, “simple amendments are impossible, the full prosecution record is available, and courts endeavor to adopt saving constructions.”

    It’s true that courts endeavor to do this. And in most cases that endeavor is illegal, per Phillips.

    But excessive habitual patent love is a hard habit for certain people to kick. Some people never get off the crack.

  9. Dr. David Longo discusses the Federal Circuit’s indefiniteness decision in Ex parte McAward. [emphasis added]

    This should say “the Patent Trial & Appeals Board’s indefiniteness decision,” no?

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