PTAB Opinion Provides Reminder that Indefiniteness Rejections Must Establish a Prima Facie Case

January 26, 2018
Post by Jonathan L. Kennedy

In a recent USPTO Patent Trial and Appeal Board (PTAB) opinion, the PTAB reversed an Examiner's indefiniteness rejection as the it failed to establish a prima facie case of indefiniteness. InEx Parte Kimura, Appeal No. 17-1293 (PTAB Jan. 25, 2018), the claims were rejected for reciting, "normal pumping operation." The rejection stated the term was indefinite because "[t]he claims fail to define what a normal pumping operation is." This rejection was reversed. The PTAB noted an express definition is not required. Rather, an indefiniteness rejection must explain "why the metes and bounds of [the] pending claim are not clear" so that the Applicant has enough information for a meaningful response. Further, the standard requires that the term be assessed in light of what those skilled in the art would understand the term to mean in view of the specification.

Here the PTAB stated, "The Examiner has failed to articulate sufficient why the phrase 'a normal pumping operation' in the context of the claims, or the Specification, would be unclear to the skilled artisan, nor are any ambiguities readily apparent." The PTAB also noted that prior art references can also be considered to demonstrate the meaning of a term in the art. With these considerations the PTAB reversed the indefiniteness rejection.

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