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: http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf