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

Comments

[JohnDarling]

"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."

[Noise above Law]

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?

[JohnDarling]

"Name the case"

I'll take a guess, is it In re Donaldson?

[Noise above Law]

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?

[JohnDarling]

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.

[MaxDrei]

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?

[Patent Seeker]

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?

[breadcrumbs]

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).

[Patent Seeker]

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.

[Anon]

"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