During prosecution, claims are indefinite when amenable to multiple plausible constructions

Ex parte Miyazaki (BPAI Precedential 2008)

In a rare precedential opinion, the Board of Patent Appeals and Interferences (BPAI) has re-defined the standard for a §112 indefiniteness rejection during patent prosecution. The BPAI’s definition for pre-issuance indefiniteness focuses on ‘plausible’ indefiniteness and varies dramatically from the Federal Circuit’s standard of ‘insolubly ambiguous.’ The BPAI argues that a lower threshold of ambiguity is justified pre-issuance because it gives the PTO power to ensure that claims are “precise, clear, correct, and unambiguous.”

As such, we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.

The expanded indefiniteness examination runs parallel to the PTO’s approach of broadly construing claims during prosecution. Both tactics are intended to better ensure that issued patents can be counted-on as being valid patents.

The Federal Circuit’s insolubly ambiguous standard is premised on the strong presumption of validity associated with an issued patent. The BPAI grounds its lower threshold in the notion that patent applications have no presumption of validity.

Read the BPAI Miyazaki Opinion: /media/docs/2008/12/fd073300.pdf

110 thoughts on “During prosecution, claims are indefinite when amenable to multiple plausible constructions

  1. 110

    “If a process claim is tied to a particular machine and the specification, nor the claims, limit the machine to a particular make or model..i.e. portable or stationary, indoors or outdoors, is the claim indefinite under Ex parte Miyazaki ?”

    No. Process claims do not require structure or apparatus. And are therefore given broad interpretation. As long as you provide a particular machine or apparatus in the specification you can use the process on different makes or models
    but not be so broad that the claims read on more than one type of particular machine. For example, a process for using a photo copier could cover portable copiers, desk top copiers, battery powered copiers and so on, and be definite. The process has breadth. But if the process also covers fax machines, camera’s, paper shredders, then you cross the line and your invention is no longer tied to a particular machine but several different machines, maybe even an infinite number of machines. You now have more than one plausible construction, not to mention weakening your 101 status.

    Anon

  2. 109

    Yes Breadcrumbs you are correct, I inserted an extra word. What I meant to type was “particular” article, which is actually used in the Bilski case btw. However I did not ask for your advice, legal or otherwise. I simply asked a particular question to get different opinions on the cases we are all discussing on the blog. Since you did not answer perhaps my question itself was not clear so let me rephrase it.

    If a process claim is tied to a particular machine and the specification, nor the claims, limit the machine to a particular make or model..i.e. portable or stationary, indoors or outdoors, is the claim indefinite under Ex parte Miyazaki ?

    After all, if such was the case, a PHOSITA would have as many choices of machines, and different locations and physical structures to use the machine, as there are makes and models.

  3. 108

    Patent Seeker,

    You inserted a word into the test – “transform a physical article” is actually “transform an article”.

    You might want to read In re Bilski, where “article” and “transform” may not be defined, but purely “non-physical” steps are expressly NOT deemed non-statutoy matter of their own accord. You also seem to be applying a layman’s definition to “indefinite”. My advise would be to seek advice from an actual patent attorney – the words you use (or don’t use) will make the difference between Intellectual Property that has value and a nice piece of paper if you are attempting this on your own (the value will assurdly outweigh the cost).

  4. 107

    Since process clams are now required to be tied to a particular machine or transform a physical article to a different state or thing, are process claims indefinite if they can be performed in different physical locations and on different models of a particular machine? Also how does this decision affect the no structure limitations rule in process claims?

  5. 106

    pds said: “We, in the US, have at least attempted to put in a place a patent system in which applicants have a chance to obtain a patent without being subject to the vagaries of bureaucracy. A big difference between the US and Europe is that we have, IMHO, a healthy distrust of bureaucracy. On the contrary, you euros believe otherwise and think that the government is out to help them. Our ancestors (and some of us personally) knew better and came over here.”

    …which makes me wonder if pds is one of those people Joe Bageant was writing about, in Deer Hunting with J*s*s. They do live quite close to DC. I’m wondering what air pds breathes, what water he drinks, what food he consumes, what hospitals might receive him or his family members, and what bureaucrats (that he distrusts so much) keep that air, water, food and hospital ward safe for him. Readers will appreciate that we “euros” have a healthy distrust not just of bureaucrats but also of the behaviour of for-profit companies. We think that that public servants (what pds calls “bureaucrats”) are necessary. What “euros” and Americans have in common (and what distinguishes us from less attractive parts of the world) is an independent judicial instance to watch over the behaviour of the public servants at the PTO and the EPO. The Chinese will be delighted to encourage the world’s democracies, in the USA and all over Europe, to drive each other into the ground. You’re not Chinese are you, pds?

  6. 105

    Wow! Tough questions. I’ll just say that I don’t think section 282 affects section 112 at all when the application is being examined. A claim has to particularly point out and distinctly claim the subject matter applicant regards as the invention. If by a preponderance (i.e. it is more likely than not) one of ordinary skill can determine the metes and bounds of the claim, it satisfies 112, 2nd.

    This Miyazaki decision is terrible. If not reversed by the Fed. Cir., it’s unintended consequences are going to plague the prosecution process for years to come.

  7. 104

    JohnDarling,

    Correct on the case.

    Anyone up for answering the question?

    How applicable (or not)is the concept of a universal meaning of the Statute regardless of claim interpretation context (due to the lack of distinction in the Statute between prosecution in the PTO and enforcement in the courts) to the present issue at hand?

    Did the BPAI dismiss the tenants of In re Donaldson and create their own new law, or does In re Donaldson only strictly apply to the Statute and the various contexts for means-plus-function language interpretation?

    Is the justification for greater power given by the BPAI to the PTO actually sanctioned by the Statute?

    How does the tenant in In re Donaldson square with “The BPAI grounds its lower threshold in the notion that patent applications have no presumption of validity”?

    Or, asked another way; How does the presumption of validity affect the Statute, if indeed the Statute makes no distinction between prosecution in the PTO and enforcement in the courts?

    And one more:
    If the presumption of validity does create a distinction for the Statute between prosecution in the PTO and enforcement in the courts, shouldn’t In re Donaldson be revisited?

  8. 102

    Name the case:

    “Because no distinction is made in [the Statute] between prosecution in the PTO and enforcement in the courts, or between validity and infringement, we hold that [the Statute] applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as a part of a validity or infringement determination in a court.”

    Whether means-plus-function or not, we are talking about interpretations of claim language are we not?

  9. 101

    “Bottom line, its a complicated subject…”

    It’s only complicated because of conflicting rulings by courts as to how claims are to be interpreted. Phillips was supposed to solve that. Unfortunately, it didn’t. This decision from BPAI needlessly complicates the current “law.”

  10. 100

    “There’s nothing in the facts of this case that requires some new test for indefiniteness.”

    “nothing in the facts of this case requires some new test for indefiniteness.”

    “facts of this case require some new test for indefiniteness.”

    fixt

    “I think this decision is going to be misunderstood by the examiners (for the reasons others have mentioned, i.e. the examiners simply don’t understand the difference between definiteness and breadth)”

    For every examiner there’s an attorney who has the same problem. Bottom line, its a complicated subject and there’s a reason you get paid big dollars.

  11. 99

    “Seems to me that the BPAI is answering a question it was never asked…is this judicial activism?”

    Yes it is. There’s nothing in the facts of this case that requires some new test for indefiniteness. The standard set forth in Orthokinetics is just fine.

    I think this decision is going to be misunderstood by the examiners (for the reasons others have mentioned, i.e. the examiners simply don’t understand the difference between definiteness and breadth) and will result in a large increase in appeals. Ultimately, if the Fed. Cir. doesn’t reverse, the BPAI will be forced, in a reltively short time, to issue another “clarifying” precedential decision.

    There’s a reason why judicial restraint is a good doctrine that has served us well for many years: it prevents the courts from issuing needless “holdings” that do nothing to advance, or even clarify, the law.

    It’s amusing to read the Federal Register notice on the (now delayed) BPAI rules and see the BPAI comparing itself to the Fed. Cir. Has any APJ ever been elevated to a federal appeals court?

  12. 98

    It seems to me like they were asked if the 112 rejection was valid. They said yes. And then they explained why they said yes so that the applicant wouldn’t just say “No wai! You have to use this high standard for finding a claim indefinite!”.

    Come on Bier.

  13. 96

    0.006 is right, for once. The idea that patent rights are constitutionally guaranteed is absurd.

  14. 94

    You mean, on top of all of the other recent gifts that have been dumped into the examining arsenal, like Bilski and KSR?

    “At AIPLA this year, John Whealan stood before a large section of the patent bar and said that he advocated filing fewer applications. I suppose this will soon come to pass – but not because patentees (or the patent bar) suddenly believe in being more selective, and in voluntarily waiving their (constitutionally guaranteed!) patent rights to many inventions…”

    Poor Giles Rich. He’s rolling again…

  15. 93

    “i.e. the presumption of validity is statutory.”

    Never said it wasn’t. I said that the courts created it. And they did. Then congress decided to follow their lead, as usual, making bogus malarky into law just to make things more definite for applicants. The issue here is that the courts came up with some bogus mess, congress said dur, okay, now we’re left with a statute that corrupts the rest of the statute. And 112’s aren’t the only thing corrupted by it.

    This brings me to the next weekly pet peeve going on lately. I get to hear an attorney tell me on the phone that the issue I’m relating to him is a 112 2nd issue when it is blatantly a 112 1st and is presented as such. I’m quite sure they understand the difference but here’s how it goes:

    “You lack support for this amendment because x”

    “Why do you think I lack support for it? The specification clearly says y”.

    “Because y doesn’t lead necessarily to x”

    “So you think it is indefinite?”

    “No”

    “But what you’re saying is that it’s indefinite under 112 2nd”.

    “Um no, 112 1st, lack of written description”

    “Oh”

    What part about “Your amendment x is not supported” is so hard to understand? Where did I say anything about a term being indefinite? Why insert things I don’t say?

    And yes, my ability to google is impressive. If applicants had half my googling skills they could save themselves thousands in filing, attorney and RCE fees. In about 10 seconds. And they might learn something while they did it.

  16. 92

    “I have yet to try on that sock puppet”

    No doubt because you are busy with many, many others…

  17. 91

    what I am trying to say is that interpretation on an individual term basis involves a fairly straightforward continuum of meanings from broad to narrow for a particular term. In other words, in most cases, you can’t really get wildly different plausible interpretations as to the same term. With additional terms (degrees of freedom) you stand the chance of creating permutations of interpretation. Thus, a single degree of freedom in a claim is preferable and also inherently broad.

  18. 90

    To Mr. Bloom,

    IMHO each feature in a claim represents a “degree of freedom” Notwithstanding the observation made by many already that any word is subject to interpretation, the interpretation on a word-by-word basis is fairly straightforward continuum at to each word. However, when you have two or more elements you begin to generate the two or more plausible interpretations that the BPAI speaks of.

    I’ve said it before and I’ll say it again (no, not that Mooney is an annoying troll who lives in the subway and posts from the public library) the perfect claim is written with a single distinguishing feature in the following preferred format.

    A revolutionary apparatus comprising:
    a first rather ordinary feature possibly drawn from the prior art, the first feature clearly recited and not susceptible to wildly varying interpretation, the first feature setting the context for the true magic; and
    a second amazing feature that is interrelated to the first feature in a particular way and that is recited in a singular manner using a term specifically calculated to provide the broadest possible coverage.

    Such a claim provides only a single degree of freedom and thus could not easily give rise to two or more “plausible constructions.”

    But hey, I’m just an all seeing eye.

  19. 87

    This ruling sounds fair or unfair due to the circumstances.If your talking about non-provisional its fair to reject as long as all intellectual material rights are retained as to the development of the previously unavailable product.The only way to stimulate creativity is to provide a financial incentive to create, denying this, then human advancement stops and stagnation rules. As the inventor of the provisional patent I an not sure it is being used correctly as I intended I designed provisional as an intellectual material recording instrument so inventors could build there inventions over a period of 1 year.Starting from an original idea they could be first to file to evidence conception then refine and specify the invention as experimentaation progressed this would stop claim jumpers from stealing the idea even though they had large pockets and large technicological knowledge also this would force them to negoiate in good faith instead of filing over or waiting out the idea for an abandonment then getting it for nothing like they want to do.This ruling may constitute legalization of intellectual property theft if it is enforced as I fear.Large Companies already refuse to deal with inventors in what is a refusal to deal or a conspiracy to steal mentality due to a lopsided patent system I feel.

  20. 86

    This ruling sounds fair and unfair due to the circumstances. As the inventor of the provisional patent I an not sure it is being used correctly as I intended I designed provisional as an intellectual material recording instrument so inventors could build there inventions over a period of 1 year.Starting from an original idea they could be first to file to evidence conception then refine and specify the invention as experimentaation progressed this would stop claim jumpers from stealing the idea even though they had large pockets and large technicological knowledge also this would force them to negoiate in good faith instead of filing over or waiting out the idea for an abandonment then getting it for nothing like they want to do.This ruling may constitute legalization of intellectual property theft if it is enforced as I fear.Large Companies already refuse to deal with inventors in what is a refusal to deal conspiracy due to a lopsided patent system I feel.

  21. 85

    American Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984) – “In short, in 1952 the case law was far from consistent — even contradictory — about the presumption and, absent statutory restraint, judges were free to express their individual views about it.”

    In other words, the presumption was put into the 1952 Patent Act to require judges to grant a presumption of validity to issued patents, i.e. the presumption of validity is statutory.

    Your ability to Google law review articles is quite impressive. Unfortunately, you lack the reading comprehension to understand what you find.

  22. 84

    “It’s statutory NOW. Anyone here want to guess how it got to be that way?”

    Ooh, ooh, … Mr. Kotter! By act of Congress? Signed into law by the President?

  23. 83

    “The presumption of validity obviously doesn’t apply before issue.”

    That doesn’t answer the quetion.

    The full question is:

    “The statute is the same – 112. How can BPAI have a separate standard for reviewing indeiniteness under that statute. I cannot understand.”

    Everyone can that the presumption of validity doesn’t apply pre-issue. But that doesn’t answer how there can be different standards under a statute that should mean the same thing in all instances of its application. I gave the part of the answer that shows where the divergent takes on the statute begin.

    Specifically, the answer is that there must be a difference in the interpretations of 112 to account for the presumption of validity even though 112 blatantly says something that would otherwise be counter to the interpretation that takes the presumption into account.

    After that I just juiced up the answer a bit.

  24. 82

    “Uhm, actually, the presumption of validity is statutory. That means it was created by statute, not a court.”

    It’s statutory NOW. Anyone here want to guess how it got to be that way? You in the back, JD, maybe you would like to take a stab at that particular question?

    If you feel the need to cheat you can look here:

    link to cardozoaelj.net

    pg. 13

    Or here:

    60 American Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984).

    for the answer.

    In any case, like I said, they’re now stuck with defending what they created for themselves back in the day.

    I thought you knew our patent system JD? Didn’t you go to law school?

    LOL.

  25. 81

    “Uhm, actually, the presumption of validity is statutory.”

    Which also answers the question that 0.0000006 muffed, to wit: “How can BPAI have a separate standard for reviewing indefiniteness under that statute.” The presumption of validity obviously doesn’t apply before issue.

    I should probably already know this, but does the presumption apply in a reexamination?

  26. 80

    “It’s quite simple really, the courts decided way back when that a patent should be presumed valid when there is barely any reason to do so, and they have backed themselves into covering for that bad decision.”

    Uhm, actually, the presumption of validity is statutory. That means it was created by statute, not a court.

    Didn’t you once tell me that you understood our common law system well?

    LOL

  27. 79

    The Board would serve the purpose of certainty and efficiency by choosing a case with better facts. The present claims seem rather indefinite, even under the old standard. Further, the holding is much broader than what was required to hold this particular set of claims indefinite. In my view, the Board knew what they wanted to hold in a case and then looked for an application lacking a good position to challenge that holding. They topped this off with a new grounds of rejection to ensure this would not be directly appealable to the CAFC.

    With regard to efficiency, don’t you think this will lead to more appeals as Examiner’s feel it necessary to stick with poorly supported 112’s. Most notably, it will be at least a year before we can determine with any certainty what is definite and what is indefinite under this holding.

    A blow to applicants who cannot afford to waste money in the appeal process.

  28. 78

    “I’d like to sue Cisco and their co-conspirators – will anybody join me?”

    Go to Joe’s Cafe in downtown Dallas on Thursday morning at 8 a.m. On the corner stool at the counter you will find a fat white guy with a big red tie clutching a moot court trophy. Tell him Ray sent you.

  29. 77

    Obviously, the board is reacting to the imprecise grammar in the claims, rather than simply how to interpret individual terms. I had an argument over claims one time where the other guy didn’t understand what it meant when the CFR says that claims shall be the object of a sentence beginning with “I claim…” He also didn’t known what a present participle was or how to recognize it. Although I wonder if he wasn’t pretending so as to spend more time on the phone and bill his client, since he made me explain every instance. “no problem!” i said. Time spent hassling over 7th grade grammar is time not spent discussing the invention itself and who would want to do that?!?

  30. 76

    “The statute is the same – 112. How can BPAI have a separate standard for reviewing indeiniteness under that statute. I cannot understand.”

    Because the statute requires the lower threshold, but the courts created for themselves a higher threshold to attempt to preserve the presumption of validity which they created for themselves. It’s quite simple really, the courts decided way back when that a patent should be presumed valid when there is barely any reason to do so, and they have backed themselves into covering for that bad decision. Put another way, the courts have created for themselves things which appear to run counter to the law, but it is one of those gray areas where they get latitude I suppose.

  31. 75

    Why you are right, having been the first one to bring that added grounds of rejection up in the thread I had already dismissed it as a run of the mill 112 that I cared little about. My bad, I was bothering only with the precedential portion of the decision after having considered that 112 reasonable as well.

    “From this description, we understand the phrase
    “sheet feeding area” to refer to two areas on the printer, viz, the
    accommodation space in which the paper roll is loaded and the
    cover member above the accommodation space on which the stiff
    carton and sheets of paper rest for feeding into the printer.
    8. Claim 15, however, belies this understanding in that it claims a
    large printer comprising a sheet feeding area and a cover member. We surmise then from claim 15 that the
    recitation of sheet feeding area is broader than the embodiment
    disclosed in the Appellant’s Specification. Thus, we must
    consider the ordinary meaning of the words of the claimed phrase.
    9. The word “sheet” potentially…”

    That sums up why it is reasonable. Can’t say I would have bothered myself with the 112 but, it is reasonable. They parse the term because the applicant made a claim with redundant terms thus forcing them to consider the words outside the art recognized term.

  32. 74

    “I can also picture the number of “clarifying” amendments which will be made and thereby creating file wrapper estoppel.”

    God forbid we actually understand the scope of the invention before spending millions in litigation fees.

  33. 73

    Dear Mr. Ordinary, We here at Qualipatent have most respect for esteemed members of the Fairness Coalition. We provide them most excellent service on big cost-saving projects, freeing up Coalition customers to spend their money on Congressional Lobbyists. To date, Coalition members only send us their specifications with instructions not to do any searching. We offered to provide them back-office lobbying support services but they said no. What a bunch of elitists.

  34. 72

    The statute is the same – 112. How can BPAI have a separate standard for reviewing indeiniteness under that statute. I cannot understand.

  35. 71

    Dear Mr. Pope,

    Re: “…
    what a complete and utter joke the patent system is becoming,
    complete with a brand new ruling that allows Examiners to apply a narrower standard than the CAFC,
    on top of an ‘it’s obvious if it’s obvious’ case and
    a forced licensing case in the event of valid and infringed claims…”

    That about sums it up.
    How disheartening.
    I attribute the utter joke to Cisco and their ilk in the “Coalition.” Their anti-patent propaganda and overt and covert lobbying infiltrated the press, laypeople, PTO management, Congress, Judges in district Courts, the CAFC and the Supreme Court.

    I’d like to sue Cisco and their co-conspirators – will anybody join me?

  36. 70

    (e.g., the definition of “method” has changed a dozen times in the last decade.)

    I’m interested in this — can anybody point me to a reference for these definitions? Thanks in advance.

  37. 68

    BTW, is it only me, or is the PTO’s electronic business center off-line this morning?

  38. 67

    Earl, why don’t you apply for a most excellent job with the USPTO?

    Earl at Excellente wrote:

    “We at Excellentate here in Hyderabad write most excellent patents, and we are most gladdened to read the opinion of Board of Patent Appeals.
    Much of damage to patents is caused by bad specifications. You can always trust us to most excellently write clear patent specifications and to the highest ISO 9004 certified standards. Our Oracle-certificate Microsoft-certified Sun-certified patent engineers are most certified to carefully write specifications in every technology, within 24 hours of customer order. These patent engineers also built our new flash-enabled website. In this recession, we will also help writing most excellent Appeal Briefs (or boxers if you prefer).
    Other services provided by our most excellent patent engineers include Sarbanes Oxley compliance reviews, Java programming, and call center re-engineering.”

  39. 66

    “US practitioners might therefore care to peruse the relevant para of the EPO Guidelines, when faced with a 112 or a 103. Or indeed, read the whole thing. The work is short and available on the EPO website. Apoplexy Warning: the Guidelines presume that evidence is unnecessary, and that mere discussion between the Exr and the attorney is enough, to settle (as a practical matter) what condensed meaning the PHOSITA would have derived from any particular written document. Closure comes quickly.”

    No sh t sherlock closure is going to come quickly when no evidence is easy if I was exminer … without evidence, I could reject every case that comes before me … make up any “techical problem” or insane claim interpretation.

    We, in the US, have at least attempted to put in a place a patent system in which applicants have a chance to obtain a patent without being subject to the vagaries of bureaucracy.

    A big difference between the US and Europe is that we have, IMHO, a healthy distrust of bureaucracy. On the contrary, you euros believe otherwise and think that the government is out to help them.

    Our ancestors (and some of us personally) knew better and came over here.

  40. 65

    “Since you missed the opening sentence of the decision, allow me.”

    Um, .0006, you might want to try reading more than just the opening sentence of an opinion the next time. Yes, the opening sentence summarized the Examiner’s rejections. But the Board later entered their own rejection with regards to the “sheet feeder area” limitation. You owe pds another apology.

    That said, I still think pds is wrong and the board was right. Pds’s comments suggest that the Board was saying that the term “sheet feeder area” was per se indefinite. That’s not true at all. To the contrary, they were doing exactly what we want Examiner’s to do – reading the claims in light of the specification (and in light of one another). Attorneys often write crappy claims. They should be weeded out during prosectuion, when there is still time to fix them. We should applaud when the office actually articulates a good, solid 112 rejection.

  41. 64

    “What struck me immediately is that the PTO Exr (or his/her mentor) must be an avid reader of that slim volume called the EPO Examination Guidelines.”

    Funny, I was saying the same thing about Europe, they reject claims the same way in Europe and the US.

    MadMax — since both offices are rejecting patent applications, I’m sure you are going to see many similarities between the two. However, unlike normal people, who recognize that these similarities are inherent, you seem to find any statement by the USPTO/Fed. Cir. etc. that mirrors something done in the EPO as a grand affirmation of the greatness of the EPO.

    God … your shtick is old.

  42. 63

    6K writes:
    “Do you notice the lack of anything saying that one of ordinary skill doesn’t know what a sheet feeder area is?”

    I always find it amusing with you attempt to lecture me 6K:

    Page 17, lines 3-5:
    “Claim 13, however, suffers from another problem in that it is unclear what is meant by a “sheet feeding area,” as explained infra in the New Grounds of Rejection.”

    Since claims are interpreted in view of one having ordinary skill in the art, the BPAI is saying that one having ordinary skill in the art is “unclear what is meant by a ‘sheet feeding area.'”

  43. 62

    Sadly I tend to agree with Gideon Pope.

    Unlike David Stein, I foresee that Applicants will keep filing applications but will slow prosecution down, hoping that the USPTO will change.

    Eventually, Applicants will realize that since there is no chance for a granted patent, however worthy the invention, they may as well file an application for any idea.

    It will be worthwhile to maintain the application ad infinitum. The costs for responding to the occasional rejections as well as RCE or appeal fees will be considered annuities.

    The USPTO will run, de facto, a registration system. The public notice function of the patent system will dissappear.

  44. 61

    Gideon, thanks for the clarification. I fully agree with your position – I too tell my clients that the system is messed up and that at the end of the day, whether not they get a patent; and whether or not that patent will be commensurate in scope with the protection they deserve; and whether or not that patent will be upheld as valid and infringed in court; and whether or not they will be able to get an injunction, is one big crapshoot. These days, I don’t see how a practitioner can say otherwise.

  45. 60

    Thanks, 6, for quoting the first sentence of the Decision (which I myself haven’t read). What struck me immediately is that the PTO Exr (or his/her mentor) must be an avid reader of that slim volume called the EPO Examination Guidelines. No competent attorney in Europe would waste 5 minutes defending such a claim, because the attorney would already know it to be a 112 no-hoper. We in Europe see echoes of the EPO Guidelines in much of what comes out of the USPTO these days. Talk about a drowning man (the USPTO) clutching at anything that might save him. US practitioners might therefore care to peruse the relevant para of the EPO Guidelines, when faced with a 112 or a 103. Or indeed, read the whole thing. The work is short and available on the EPO website. Apoplexy Warning: the Guidelines presume that evidence is unnecessary, and that mere discussion between the Exr and the attorney is enough, to settle (as a practical matter) what condensed meaning the PHOSITA would have derived from any particular written document. Closure comes quickly.

  46. 59

    “Instead, of trying to figure out whether or not one skilled in the art would be able to discern a meaning for the term, they proceed by simply parsing the term into the individual elements an attempt to discern a meaning from those individual elements”

    Since you missed the opening sentence of the decision, allow me.

    “The Examiner rejected claims 1-6, 13, and 16-18 because the recitations in the claims relating the height of the paper feeding unit and the sheet feeding area to a user’s height are unclear (Ans. 3-4).”

    Do you notice the lack of anything saying that one of ordinary skill doesn’t know what a sheet feeder area is? Do you notice the part about rejecting the claim because the parts relating the height of an object (in this case a paper feeding unit and sheet feeding area) to a user’s height? When you do, come back and make a new argument, this time directed to what was stated in the opinion.

    On that note, I’ve seen that mess a lot lately in replies filed. Attorneys arguing things that weren’t even included in the OA they’re responding to. Why do you guys insist upon making arguments that are directed to a rejection/objection that hasn’t even been made or in fact most likely never will be made? I have people arguing that it wouldn’t be obvious to replace part a in reference b with part c in reference a when the rejection blatantly involves replacing part c with part a. WTF?!?! I see this sht at least once a month. How do you guys mess up a reading of a rejection so badly that you think that it was a ivo b instead of b ivo a? It’s included in the header for goodness sakes!

  47. 58

    “I think what’s happening is that Examiners are making reasonable requests for more definite claims and obnoxious applicants are responding by citing the indefiniteness case law (which essentially guts the statutory requirement for definiteness).”

    Yes, yes, indefiniteness case law “guts” statutory definiteness…. waiver “guts” the 11th amendment… Examiners are “reasonable” applicants are “obnoxious” ….

    What planet exactly are you from again Mooney?

    “This is an attempt to put a lid on applicant whining about having to amend their claims so they can be understood.”

    Yes, yes, applicants always whining… lets put a lid on it….

    Don’t forget “doo doo”

  48. 57

    In response to my observation that the patent system is a bad joke, and we’re all part of it, somebody wrote:

    “Well, at least Gideon is honest. A shame I’m saddled with a conscience and think there’s more to this profession than finding an excuse to bill the client.”

    Well, I think you’ve missed my point.

    My point is this:

    Whereas you tell the Client that you are “protecting their intellectual property” or something of that nature, I tell the Client that the system is a joke, and the best you can do is play a ridiculous game in the hopes that you can extract some property with value at the end of the game. The rules of the game are found in 37CFR and 35USC. Some unofficial rules can be found in the MPEP.

    Point is, YOU lead the client to believe that there is a system that is place to properly protect their inventions, and all they need do is pay the required fee, endure the examination process, and, if all is in place, their invention is protected.

    I tell the client that the system is incorrigibly corrupt by the imbalanced Examiner incentive system, that they may or may not get a patent on their invention, with the likelihood of the issuance being only weakly correlated with the novelty and nonobviousness of their invention, and that whatever issues as a patent may or may not have value and may or may not withstand the assault of any, unrestricted, number of harassing reexaminations or validity challenges.

    You seem to equate my complete disaffection with the patent system in the U.S. as an indication of the level of commitment and effort I give my clients. You’re completely wrong.

    Think about it this way.

    You claim that you “have a conscience.”

    OK.

    If my client is lying in bed right now looking up at the ceiling with full awareness of what a complete and utter joke the patent system is becoming, complete with a brand new ruling that allows Examiners to apply a narrower standard than the CAFC, on top of an “it’s obvious if it’s obvious” case and a forced licensing case in the event of valid and infringed claims, and your client is lying in bed right now looking up at the ceiling thinking that the incomplete picture of the patent system that you have provided is true,

    then who is the one with the conscience?

  49. 56

    I’ve been too busy making sure that I get as many appeal briefs in under the old rules as possible to get too much into this.

    However, before people get too worked up over it …. remember, this is the BPAI’s opinion … which is just a little step above an examiner’s opinion and many, many, many steps below that of the Federal Circuit’s opinion.

    I wouldn’t doubt if the Federal Circuit smacks this down before the end of 2009. All it takes is one motivated applicant.

    I read a little more of the opinion, and I’m again struck by the PBAI’s feeble attempt at claim construction. Instead, of trying to figure out whether or not one skilled in the art would be able to discern a meaning for the term, they proceed by simply parsing the term into the individual elements an attempt to discern a meaning from those individual elements.

    There are 24 isssued patents who specification contains the exact phrase “sheet feeding area,” and most of them appear to be directed to printers. There are also 4 issued patents in which the phrase “sheeting feeding area” is found in at least one of the claims.

    For the BPAI to assert that this phrase is indefinite evidences a willful ignorance that this term has a meaning to one skilled in the art.

  50. 55

    Patent_Suit wrote:

    “As people and institutions flock to the dollar even as it pummels them, because it’s the ‘U.S.’ dollar, so to will they continue to file applications at the USPTO.”

    That’s an interesting observation. I suppose that, for foreign applicants, the diminishing value (promptness, reliability, enforceability, etc.) of a U.S. patent may be offset by a rapidly tilting exchange rate. However, it’s not likely to help domestic applicants, who must contend with diminished patent value, in addition to rising costs (due to increasingly complicated prosecution) – on top of a collapsing domestic economy.

    So it might be interesting to track metrics of domestic vs. foreign applicants over the coming years… anyone know of a way to compile such stats?

    – David Stein

  51. 54

    Gideon Pope wrote:

    “2. The quality of Office Actions is going to fall off a table. Why on earth will an Examiner actually take the time to make a proper art rejection when he/she can simply throw out some crap 103 and an indefiniteness rejection knowing that a new 112 can be created at any time.”

    Yes, that’s in the works.

    At AIPLA a year ago, I had a conversation with a USPTO new hire who was percolating through the trainee program about the USPTO’s application of KSR. This is a near-verbatim quote from the examiner, based on the USPTO training:

    “Why SHOULD I have to find a ‘motivation to combine’ references for an obviousness rejection? Let’s say you have a reference A that features a component B, and a reference C that features a component D. Of course it’s obvious – all you have to do is glue B onto D – DUH!”

    Now, tack onto this the wildly expanded scope of “ambiguous.” I think we can all guess where this is going.

    Back in 1949, when the Supreme Court was going through a rabid anti-patent phase, a dissenting justice famously commented that “the only patent that is valid is one this Court hasn’t been able to get its hands on.” Modern trends revive this doctrine – except that it’s now applied earlier in the process by the USPTO.

    – David Stein

  52. 53

    David Stein wrote “They can just keep everything as a trade secret and save their filing fees.”

    I am not sure how 90% of the inventions can be kept as trade secrets.

  53. 52

    Well, at least Gideon is honest. A shame I’m saddled with a conscience and think there’s more to this profession than finding an excuse to bill the client.

    Looks like defining terms in the spec is now more important than ever.

    Too bad being a PHOSITA isn’t part of an examiner’s job description.

  54. 51

    I agree with Gideon.

    “Why on earth will an Examiner actually take the time to make a proper art rejection when he/she can simply throw out some crap 103 and an indefiniteness rejection knowing that a new 112 can be created at any time.”

  55. 50

    2 things.

    1. Examiner 6 (Dennis as Evil Kirk) – I make 1,000 on a slow day. How much do they give you for that RCE count? Also, keep in mind, lower allowance rate, greater salary for GP. Sveeeet!

    2. The quality of Office Actions is going to fall off a table. Why on earth will an Examiner actually take the time to make a proper art rejection when he/she can simply throw out some crap 103 and an indefiniteness rejection knowing that a new 112 can be created at any time.

    The money is off the charts, there’s no doubt about that. And, as I’ve admonished you before, don’t let the Patent Office 3 ring circus bother you. Understand that you are part of a game, play your part, take your money and go home.

    The only downside I see is that 99% of the practitioners I see around me are hell bent on propping up the notion that the entire system, including our participation, is not a complete joke.

    It is, and every new decision or rule change just makes it more obvious.

    Tee Hee! It makes it more obvious! Tee hee.

    How have you been Mary?

  56. 49

    David Stein – I find merit in your point of view. However, I disagree with your conclusion, at least in the short-medium term. As people and institutions flock to the dollar even as it pummels them, because it’s the “U.S.” dollar, so to will they continue to file applications at the USPTO. Of course, the USPTO will wrongly interpret these continued filings as proof that it’s policies are justified and good, and that even more of the same policies are needed.

  57. 48

    “This decision is one giant Christmas present for examiners.”

    You mean, on top of all of the other recent gifts that have been dumped into the examining arsenal, like Bilski and KSR?

    At AIPLA this year, John Whealan stood before a large section of the patent bar and said that he advocated filing fewer applications. I suppose this will soon come to pass – but not because patentees (or the patent bar) suddenly believe in being more selective, and in voluntarily waiving their (constitutionally guaranteed!) patent rights to many inventions…

    I predict that applications will drop in the next year because applicants no longer trust the USPTO to provide a fair examination. Prosecution is becoming random – a tangled thicket of arbitrary rejections, utterly vague rules (“particular” machine, anyone?), and a body of law that is in constant flux even in its basic tenets (e.g., the definition of “method” has changed a dozen times in the last decade.)

    Unfortunately, this is a terrible way to reduce filings. Other rate-limiting mechanisms, like application fees, can be easily throttled back when the rate drops too low. What about broken trust? If large segments of world industry just walk away from the USPTO, how do you get them back? It’s not like the PTO can announce, “OK, we’ve been arbitrary and malicious with your applications recently, but we’re going to play nice now, so please come back and start filing again.”

    Anyone see Jim Cramer’s segment on the stock market a few weeks ago, wherein he summarized the market as “rigged” and advised stock traders to pull all non-disposable money out of the market?

    I’m starting to wonder if my best counsel for clients – particularly small clients – may be not to bother with the U.S. patent system. They can just keep everything as a trade secret and save their filing fees.

    – David Stein

  58. 47

    “Claims routinely go down in flames during litigation because of a ‘word or two’ in the spec, and rightfully so. Better for everyone that those claims are never issued at all.”

    C’mon, ASE, even you will agree with this. Won’t you?

  59. 46

    “This is now the second BAPI decision I’ve seen where they jump on a word or two in the spec to issue a rejection.”

    Uh … so what? Is there some minimum number of confusing/contradictory words in the spec below which the PTO should not be allowed to ask for clarification? Give me a break.

    Claims routinely go down in flames during litigation because of a “word or two” in the spec, and rightfully so. Better for everyone that those claims are never issued at all.

  60. 45

    “As to MVS and his comments, I lament his lack understanding and ability to read…”

    I couldn’t have said it better myself.

  61. 44

    “You need to find the other posts. I’m not going to do it for you.”

    No, I don’t need to. I wasn’t the one crowing about my “prediction.”

    “Nor do I take his comments about my for fun postings as bearing any relevance to RL.”

    That’s probably a good idea. None of us view your postings as bearing any relevance to RL, either.

  62. 43

    “At best, you predicted that Section 112 would be a continuing issue. Nice work.”

    You need to find the other posts. I’m not going to do it for you. At best, and in reality, I quoted the relevant portions that the board did and said that they lead to the same conclusion the board did. They’re probably right around the same time as I posted in that thread, shouldn’t be too hard for you to find. In any event, it hardly matters, what’s important is that 112’s shall flow like sweet molasses for prosecution. Mmmm, tasty and slow is this particular gravy train.

    I don’t have time to do all your research for you on the side, you pay me to do it as my job and occasionally I have to do my job.

    As to MVS and his comments, I lament his lack understanding and ability to read the decision himself but I’m not going to sit and make fun of a SPE. Nor do I take his comments about my for fun postings as bearing any relevance to RL.

  63. 42

    Examiner 6k: Sorry, but predicting that 112 will continue to be an issue is not much different than predicting that the sun will rise tomorrow.

  64. 41

    “I predicted the shift in 112 practice before the office. The decision laid out precisely what this board decision says.”

    The Halliburton decision? Are you kidding? At best, you predicted that Section 112 would be a continuing issue. Nice work.

    And thanks for reminding me of that old thread. My favorite comment on there was addressed to you by our dear friend MVS. Apparently you didn’t it understand it any better than you did the Halliburton decision:

    “Now, please try to present your ‘opinions’ in a clear, and non-embarrassing, manner. And try to remember the old saying: ‘It is better to be silent & let people think that you are dumb than to speak up & confirm it’.”

  65. 40

    I can also picture the number of “clarifying” amendments which will be made and thereby creating file wrapper estoppel.

  66. 39

    And this gives the chance for the Board to throw in a new 112 rejection when it can’t make a good 103.

  67. 38

    link to patentlyo.com

    And other scattered posts lost to the 4 winds of PO.

    I predicted the shift in 112 practice before the office. The decision laid out precisely what this board decision says. My boss sent me the decision and wanted us to read it.

  68. 37

    The examiner’s original 112 wasn’t that bad … the Board’s new 112 is farking ridiculous, although I note that it came up because an attorney bungled up the specification.

    This is now the second BAPI decision I’ve seen where they jump on a word or two in the spec to issue a rejection.

  69. 36

    “Did I not tell you a little while back that this was coming?”

    Did you? What exactly did you predict? And can you remind us where?

  70. 35

    “Different. A plausible claim construction need not be a very broad one, it could be very narrow in fact.”

    I think that is correct. Even a broken watch is correct twice a day.

  71. 34

    Oh, and get a load of the 112 the board added in as a new grounds of rejection. That’s a gem in and of itself.

  72. 33

    “Is a “plausible claim construction” the same as, or different from, the “broadest reasonable interpretation”?”

    Different. A plausible claim construction need not be a very broad one, it could be very narrow in fact.

  73. 32

    P W N T .

    Did I not tell you a little while back that this was coming? I laid it right out before you and you all were like NO IT”LL NEVER HAPPEN LOLZ! I even showed you right in the prior decision that led right straight to this one. The CAFC will not overturn this because they were the ones who suggested it in the first place.

    Eat it. And my 112’s. Can you smell the RCE gravy train?

  74. 31

    “Who else finds it ironic to have the PTO lecture practioners on ambiguity when a sizable number of the examiners can’t even write a clear office action?”

    Let’s not forget the crystal clarity of proposed Rule 78. How many “updates” and “clarifications” of that one were issued in the wake of the proposed rules?

    And that was written by their legal masterminds.

    Yikes!!!!!

    Is a “plausible claim construction” the same as, or different from, the “broadest reasonable interpretation”?

  75. 30

    “As a practical matter, I anticipate that a vast number, if not a majority of, examiners will confuse breadth for indefiniteness.”

    For example, “vehicle” covers cars and trucks

  76. 29

    Who else finds it ironic to have the PTO lecture practioners on ambiguity when a sizable number of the examiners can’t even write a clear office action?

  77. 28

    Who else finds it ironic to have the PTO lecture practioners on ambiguity when a sizable number of the examiners can’t even write a clear office action?

  78. 27

    Let’s start with this:

    It’s insane that the BPAI thinks that it can apply a different, tighter standard than everybody else.

    Why not do that for everything?

    It’s classic PTO hubris.

    The PTO actually thinks it has the authority to reject claims that the CAFC would find patentable.

    Classic PTO, classic government.

    Wow, what I’d give to retire in 09 and be done with this silliness.

  79. 26

    “If the claims are in English, they are necessarily susceptible to more than one interpretation.”

    Since it begins with a conditional, your comment suggests that there is at least one language in which claims would not be necessarily susceptible to more than one interpretation. Which language would that be?

  80. 25

    lol … so now examiners are going to be looking for the two broadest reasonable interpretations

    God help us.

  81. 24

    “Leopold, I do not follow you at all. It seems you’re saying that “two doesn’t equal two.” The inescapable meaning of the BPAI’s language (‘multiple plausible constructions’) is that if a claim can be interpreted to read on two different things, it is indefinite.”

    Perhaps the clearest example of what I mean is when a claim includes a term like: “said thingamajig comprising a whatsit, or a whosit, or both.” That’s not indefinite – yes, there are several distinct embodiments, but we know what they are.

    The two plausible claim constructions that the BPAI is concerned about arise when you have a true ambiguity in the claim.

  82. 22

    If the claims are in English, they are necessarily susceptible to more than one interpretation.

    (Even the Board’s decision can be interpreted in a number of different ways.)

  83. 21

    Over on Justn’Examiner blog, it is contemplated that a tighter requirement for filings to be “definite” might bear particularly harshly on alien Applicants writing in English as a foreign language. If a stricter requirement makes the US patent system “stronger”, shouldn’t readers be in favour?

  84. 20

    They rely on the “broadest reasonable interpretation” rule. I’ve never see it stray outside of the 102/103 context. It seems logically inconsistent in a 112 context. BRI means claim covers A AND B, but indefiniteness means the claim covers A XOR B, and you can’t tell which.

    That “broadest reasonable intepretation” line has got to be the single most quoted judicial utterance in all office actions. Every examiner should pay homage to whoever came up with it.

  85. 19

    I think what’s happening is that Examiners are making reasonable requests for more definite claims and obnoxious applicants are responding by citing the indefiniteness case law (which essentially guts the statutory requirement for definiteness).

    This is an attempt to put a lid on applicant whining about having to amend their claims so they can be understood.

    We’ll see if it works.

  86. 18

    Nothing wrong with giving the PTO the task of objecting to claims that are truly ambiguous. “Ambiguous” was a ground of revocation in UK, till it joined the mainland European patent law benchmark. The highest duty of a PTO is to weed out any claim that inflicts legal uncertainty on the public, before that claim gets to issue. What’s wrong is taking matters to extremes, like rejecting every claim except that one that is incapable of being construed in more than one way. Wrong because that would render invalid every claim under the sun written by man. There is no claim that will satisfy that test of allowability. What’s needed then is an experienced first instance for patent litigation, accustomed to construing patent documents, reasonably, through the eyes of PHOSITA, the intended reader, and applying the principle (used throughout Europe)of synthetical propensity (reader deemed to have a mind willing to understand and seeking to synthesise meaning from the document). I suppose it’s easier to do that in the EPO, where everybody is using English as a foreign language, and so exalts substance over mere word form.

  87. 17

    “the simple fact that a claim encompasses two or more (or an infinite number of) variations does NOT make it amenable to multiple plausible constructions”

    Leopold, I do not follow you at all. It seems you’re saying that “two doesn’t equal two.” The inescapable meaning of the BPAI’s language (“multiple plausible constructions”) is that if a claim can be interpreted to read on two different things, it is indefinite.

    The facts in this appeal don’t lend themselves to a finding of definiteness, but they shouldn’t give rise to the horrible legal axiom the BPAI spit out.

  88. 16

    The old axiom of bad facts making bad law comes to mind with this one.

    BTW, anybody looking for a peek into the PTO petitions process should read the decision to deny appellant’s petition to enter the reply brief. The examiner cites some one page printout from a website and claims the one page printout “clearly anticipates” five of the claims. No other explanation provided.

    The appellant responds that the printout isn’t even prior art.

    Examiner says see pages 3-4 of some other website on the PT-892.

    Appeal Brief filed.

    Examiner’s Answer filed. The examiner now includes a claim chart as to how the apparatus covered by the one page printout anticipates the claims.

    Applicant’s attorney gets a user manual of the apparatus from the internet and traverses the rejection. Attaches the user manual to the reply brief.

    Examiner refuses to enter reply brief.

    Appellant petitions.

    Petition denied. Appellant should have done the examiner’s job in the first place and gotten the user manual before appealing.

    Classic.

  89. 15

    “Like one having ordinary skill in the art wouldn’t know what the ‘sheet feeding area’ is.”

    pds, how do you deal with the fact that the description says “sheet feeding area includes an accomodation space and a cover member,” while one claim recites a sheet feeding area AND a cover member? Admittedly, I haven’t read the application, but that kind of distinction can make a real difference in threading the needle between invalidity and infringement.

    You see this kind of inconsistency all the time in issued patents, and whether or not the CAFC ultimately finds a way to resolve the ambiguity, this problem causes real uncertainty and expense. Examiners should be allowed to point out these problems and have them corrected.

  90. 14

    Is it logical to assume that most regular examiners will read and apply Board decisions when even most registered practitioners do not? How many of you have ever had a Board decision cited by an examiner [that was not from the MPEP or an Examiner Guideline] as the basis of an application rejection?
    In any case, the law is long established that claims within the PTO are given their broadest reasonable intepretation. That is not the reading an issued patent claim may get in a Markman hearing, or anywhere else in litigation, (so this Board decision is no surprise). Current CAFC panels are inconsistent on the latter, but not the former.

  91. 13

    “As a practical matter, I anticipate that a vast number, if not a majority of, examiners will confuse breadth for indefiniteness.”

    Agreed. Unfortunately, some of the language in this opinion will feed that confusion. For example, at page 14 the BPAI appears to be concerned that “an infinite number of combinations of printer and user positions could be envisioned.” In reality, the problem is not that the combinations are infinite (you can have a well-defined, definite, infinite set), but that the result is that the limitation imposes no limitation at all.

    All in all, however, I think the BPAI’s interpretation of the law and application to this case is pretty reasonable. The problem in the future is likely to be whether examiners make an adequate shwoing that a claim is “amenable to two or more plausible claim constructions.” Or whether they understand that the simple fact that a claim encompasses two or more (or an infinite number of) variations does NOT make it amenable to multiple plausible constructions.

  92. 12

    “I anticipate that a vast number, if not a majority of, examiners will confuse breadth for indefiniteness.”

    Too late.

  93. 11

    Like one having ordinary skill in the art wouldn’t know what the “sheet feeding area” is.

    Give me a freakin break ….

  94. 10

    As a practical matter, I anticipate that a vast number, if not a majority of, examiners will confuse breadth for indefiniteness.

  95. 9

    …wouldn’t the broadest possible meaning of the claims (being construed), as is currently the norm for examiners, necessarily include multipple plausible constructions?

  96. 8

    I laud the goal of claims that are “precise, clear, correct, and unambiguous.” Unfortunately the limitations (and flexibility) of language is only made worse by technology and rapidly moving science in which it is not clear WHAT to call something. And, of course, all claims have to be in single sentence form.

    Even when it is possible to tie down the exact meaning in a claim, this is somewhat of a fools errand since the subject of the claim may not be immediately obvious:
    e.g.,(a) a protein defined by an antibody (unless you have the antibody, you do not know if there is infringement, so it is difficult for most readers to determine this)
    (b) a condition that is measured by a particular machine that is no longer made.

  97. 5

    Precisely. Every claim word that’s construed according to its ordinary meaning necessarily includes numerous meanings that exist on a spectrum of definiteness. Looks like the Board’s new rule may violate the POSA-based definiteness standard set by 112. If a claim meets the law, then it should issue.

  98. 4

    “multiple plausible constructions” is a terrible standard. Almost every single term in the English language is subject to multiple plausible constructions.

    Why doesn’t the PTO just write up a regulation allowing only one claim – a specification-length picture claim – per application? Perhaps it doesn’t have the authority to do this, but it hasn’t stopped them before.

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