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"Insolubly Ambiguous" Standard not Applicable at the USPTO
May 09, 2014

InIn re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness. Rather, the Federal Circuit held 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 claims claim as [indefinite].

(emphasis added). The Federal Circuit tempered this holding by citing to Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.2d 124, 136 (2d Cir. 1958), stating,

At the same time, this requirement is not a demand for unreasonable precision. 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. . . . Rather, how much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.

The patent application on appeal (Serial No. 12/004,324) was directed to a coin change holder shown in Figures 1 and 2 above. Claims 28 through 37 were on appeal—claims 1 through 27 were cancelled during prosecution. Claim 28 is representative of the issue on appeal:

28. I claim a small, thin, flat plane, rectangular change holding card and wallet/billfold or purse construction with the front top side of the card comprising three raised, straight, parallel, double flanged separators and two raised, straight, parallel, double flanged side edges and a raised side edge end thereby forming four parallel, side by side, flanged coin holding channels or rows of the same length and of different widths, one for quarters, one for dimes, one for nickels, and one for pennies, that are similarly blocked at one side edge by the raised side end edge with the other side of the channel/rows open except for small, fixed, flexible, partially moveable, rubber or plastic retainers that are attached to the topside and ends of the double flanged separators such that coins can be retained on the card and yet slide freely above the surface of the card and obliquely overlap as necessary within the channel/rows between the separators while the bottom, back side of the card is constructed with a wallet, billfold or purse extending from it.

The Examiner rejected the claim as indefinite for lack of written description and as obvious. The Examiner asserted that multiple limitations were indefinite for lacking antecedent basis or "were otherwise unclear." Mr. Packard appealed to the Patent Trial and Appeal Board (PTAB). The PTAB affirmed the rejection citing MPEP § 2173.05(e) which states, "[a] claim is indefinite when it contains words or phrases whose meaning is unclear." Mr. Packard appealed the PTAB's decision to the Federal Circuit. On appeal, Mr. Packard argued that the test applied by the PTAB, as set forth in the MPEP, fails to meet the insolubly ambiguous standard articulated by the Federal Circuit.

The Federal Circuit noted that no case had previously addressed the question presented by this case—"what standard for indefiniteness should the U.S. Patent and Trademark Office apply to pre-issuance claims." The Federal Circuit made clear that a different standard applies to pre-issuance claims (i.e. patent applications under prosecution) that to post-issuance claims (i.e. when an issued patent is being challenged). Further, the Federal Circuit noted a basis for its decision is that "Congress assigned to the USPTO the responsibility to examine applications to ensure compliance with the statutory criteria for issuance of a patent." Thus, "indefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an issued patent."

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