Way back on August 25, 2017, the U.S. Patent and Trademark Office designated Ex parte McAward[1] as precedential authority for defining the USPTO and the PTAB’s policy on assessing indefiniteness as defined under 35 U.S.C. §112(b)[2] during prosecution. However, McAward does not so much define the USPTO’s rules on indefiniteness but rather reasserts its position vis-à-vis In re Packard.[3]
In McAward, Claim 1 was illustrative of the subject matter:
1. A water detector comprising:
a housing;
flow connectors carried by the housing including a spin-on female pipe connector at an inflow end and a spin-on mail pipe connector on an outflow end;
at least one water presence sensor carried by the housing;
an electrically actuatable valve, carried by the housing, and having first and second states; and
control circuits, carried by the housing, coupled to the sensor and valve, and, responsive to a leakage indicating signal from the sensor, the circuits actuate the valve causing it to change state wherein the control circuits detect flood conditions, shut off a malfunctioning water branch to a home appliance and communicate to a premises alarm communication device or home automation system via a wireless link and 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.
(Emphasis added.)
During prosecution, the Examiner rejected Claim 1, and specifically the language emphasized above, as unclear and indefinite under §112(b). One of ordinary skill (i.e., POSITA) could not determine the metes and bounds of the subject matter because 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.”[4]
By using the much lower standard enunciated in Packard, the USPTO’s position is directly opposite that of the United States Supreme Court’s position on indefinitness held in Nautilus, Inc. v. Biosig Instruments, Inc.[5] The Nautilus test is that a “patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”[6] The Packard test is “a claim is indefinite when it contains words or phrases whose meaning is unclear.”[7] As the PTAB noted in McAward:
The lower threshold makes good sense during patent examination because the patent record is in development and not fixed, the Office construes claims broadly during that period, and an applicant may freely amend claims. . . . By contrast, once a patent has been issued and is under review by a court, simple amendments are impossible, the full prosecution record is available, and the courts endeavor to adopt saving constructions.[8]
This may seem to be a confusion where PTAB is not following the holding a Supreme Court case. However, on closer inspection, the PTAB is only continuing its long-held policy on indefiniteness consistent with the Fed Circuit, its reviewing court of appeals. Also, this is consistent with MPEP 2173.05(e), which reiterates the unclear language from Packard, and mentions nothing about the reasonable certainty test from Nautilus. The Packard standard is a much more liberal test for indefiniteness than the Nautilus standard, but it is in line with existing USPTO examination rules. The dividing point for using which test comes from the Judge Plager’s concurrence in Packard:
As a legal matter the USPTO does not have to deal with the presumption of validity the statutes grant to post-issuance patents – sometimes said to under such an interpretation by courts. Furthermore, unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination, and the USPTO does not rely on it for intepreting claims.
The fact that his court has not yet seen fit to apply the same interpretive policy option to post-issuance cases as the USPTO wishes to apply to pre-issuance cases is not reason why the USPTO . . . should not be able to apply it in dealing with pre-issuance patent applications.[9]
That is, the broader Packard test, or the one found in MPEP 2173.05(e), is used during prosecution, while the narrower Nautilus test is used in post-issuance judicial review. The outstanding question, however, is whether either test applies during PTAB post-grant proceedings (which are outside post-grant judicial review). This may be a further question for the Federal Circuit to decide.
[1] Appeal 2015-006416 (PTAB Aug. 25, 2017) (Section I.B only).
[2] See also MPEP 2171: there are two separate requirements for 112(b), specifically (A) the claims must set forth the subject matter the inventor regards as the invention, and (B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.
[3] 751 F.3d 1307 (Fed. Cir. 2014).
[4] McAward, supra at 3.
[5] 572 U.S.___, 134 S. Ct. 2120 (2014).
[6] Id. at 2121.
[7] Packard, supra, at 1314.
[8] McAward, supra, at 8-9.
[9] Id. at 1325.