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2173

 

2173.02 Clarity and Precision [R-3]

I.   CLAIMS UNDER EXAMINATION ARE EVALUATED WITH A DIFFERENT STANDARD THAN PATENTED CLAIMS TO DETERMINE WHETHER THE LANGUAGE IS DEFINITE

METABOLITE

The viewing glass through which the claims are construed is that of a person skilled in the art. Metabolite Laboratories v. Laboratory Corp. of America, 370 F.3d 1354, 1361 (Fed. Cir. 2004).

II.   THRESHOLD REQUIREMENTS OF CLARITY AND PRECISION

III.   RESOLVING INDEFINITE CLAIM LANGUAGE

A.   Examiner Must Establish a Clear Record

B.   An Office Action Should Provide a Sufficient Explanation

C.   Provide Claim Interpretation in Reasons for Allowance When Record is Unclear

D.   Open Lines of Communication with the Applicant – When Indefiniteness Is the Only Issue, Attempt Resolution through an Interview before Resorting to a Rejection

FESTO

“What is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). 

ORTHOKINETICS
 
The test for definiteness is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
 
 
COHN

See also, In re Cohn, 438 F.2d 989, 993 (CCPA 1971) (sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, as being indefinite, where the claims were inherently inconsistent with the description, definitions, and examples appearing in applicant’s specification).
 
HAMMOCK

A principal purpose of the definiteness requirement of 35 U.S.C. § 112, "is to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with the adequate notice demanded by due process of law, so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance."
In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).


Breadth in scope does not equal indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971).

 
2173.05(a) New Terminology [R-3]

I.   THE MEANING OF EVERY TERM SHOULD BE APPARENT

II.   THE REQUIREMENT FOR CLARITY AND PRECISION MUST BE BALANCED WITH THE LIMITATIONS OF THE LANGUAGE

III.   TERMS USED CONTRARY TO THEIR ORDINARY MEANING MUST BE CLEARLY REDEFINED IN THE WRITTEN DESCRIPTION

 
MORRIS
 
"[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

PRATER
 
While claim terms are given their broadest reasonable interpretation during examination, that interpretation must be consistent with the specification. In re Prater, 415 F.2d 1393, 1404 (CCPA 1969).

Therefore, we agree with the Examiner that claim 1 is indefinite because at best, the human involvement required in the claim fails to describe non-human structure and/or material, which perform the functions recited by the "means". See Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (fed. Cir. 2005), citing to In re Prater, 56 C.C.P.A. 1381, 415 F.2d 1393, 1398 (CCPA 1969) (“…a human being cannot constitute a “means”).

TEX. DIGITAL

See also Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (citing Tex. Digital Sys. Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002)) (“If more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all consistent meanings”).
 
2173.05(b) Relative Terminology [R-6]

I.   TERMS OF DEGREE

II.   REFERENCE TO AN OBJECT THAT IS VARIABLE MAY RENDER A CLAIM INDEFINITE

A.   “About”

B.   “Essentially”

C.   “Similar”

D.   “Substantially”

E.   “Type”

F.   Other Terms

III.   SUBJECTIVE TERMS

BRUMMER

Finally, we observe that the Examiner’s reliance (see Ans. 20-26) on the decision in Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989), is misplaced. The Board found in Brummer that because the evidence of record showed no known standard for sizing a bicycle to a rider, one of ordinary skill in the art would not have known what size rider a particular bicycle was “designed for” and whether a particular bicycle was covered by that claim. Id. at 1655. However, determining the definiteness of a claim depends on the facts involved. In the present appeal, the facts are closer to what was at issue in Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986), where the front leg portion of a wheelchair was so dimensioned as to be insertable between the doorframe of an automobile and the seat thereof. Id. at 1575. Appellants’ claim 1 recites the separation between the first and the second terminal pairs to be such that an input-to-output isolation attenuation therebetween is “not less than a first stopband attenuation of the first external filter.” As such, when the external filter is selected, its first stopband attenuation would also be known. Therefore, it does not render the claim indefinite, but merely gives the scope of the claim some breadth.
 
DATAMIZE
See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention.”).
 
ORTHOKINETICS
 
The test for definiteness is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
 
“The use of the word "about," avoids a strict numerical boundary to the specified parameter.” Ortho-McNeil Pharmaceutical, Inc. v. Caraco Pharmaceutical Laboratories, Ltd., 476 F.3d 1321, 1326 (Fed. Cir. 2007). However, “the word „about‟ does not have a universal meaning in patent claims[;]” rather, “the meaning depends on the technological facts of the particular case.” Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995); see also Eiselstein v. Frank, 52 F.3d 1035, 1040 (Fed. Cir. 1995) (“The meaning of the word "about" is dependent on the facts of a case, the nature of the invention, and the knowledge imparted by the totality of the . . . disclosure to those skilled in the art.”).

SEATTLE BOX

When the term “substantially” is recited by a claim, its meaning is determined from the specification. See Seattle Box Co., v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
 
Appellants‟ claim language uses the phrase “substantially aligned”. “When a word of degree is used [it is necessary to] determine whether the… specification provides some standard for measuring that degree.” See Seattle Box Co.. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). We find that nothing in Appellants‟ Specification, except for Appellants‟ own drawings, for providing some standard for measuring that degree. Therefore, we construe the term “substantially aligned” as “substantially” is often construed in patent claims as “largely but not wholly that which is specified.” See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1573 (Fed. Cir. 1996).

2173.05(c) Numerical Ranges and Amounts Limitations

I.   NARROW AND BROADER RANGES IN THE SAME CLAIM

II.   OPEN-ENDED NUMERICAL RANGES

III.   “EFFECTIVE AMOUNT”

 
2173.05(e) Lack of Antecedent Basis [R-5]

 EXAMINER SHOULD SUGGEST CORRECTIONS TO ANTECEDENT PROBLEMS

A CLAIM TERM WHICH HAS NO ANTECEDENT BASIS IN THE DISCLOSURE IS NOT NECESSARILY INDEFINITE

A CLAIM IS NOT PER SE INDEFINITE IF THE BODY OF THE CLAIM RECITES ADDITIONAL ELEMENTS WHICH DO NOT APPEAR IN THE PREAMBLE
 
“‘[T]he failure to provide explicit antecedent basis for terms does not always render a claim indefinite.’ . . . [D]espite the absence of explicit antecedent basis, ‘[i]f the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.’” Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006). Antecedent basis can also be implied. Id. (holding that the term “anode gel” implicitly provided antecedent basis for a “zinc anode” in the same claim).
 
 
 
INNOVA
 
See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (noting that it is improper to limit claim language to particular embodiments appearing in the Specification, unless the applicant has demonstrated a clear intention to limit the claim scope).
 
PRATER
 
While claim terms are given their broadest reasonable interpretation during examination, that interpretation must be consistent with the specification. In re Prater, 415 F.2d 1393, 1404 (CCPA 1969).
 
SWINEHART
 
Contrary to the Examiner’s belief, it is well settled that applicants are free to claim a product by what it does rather than by what it is in appropriate circumstances. See, e.g., In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“transparent to infrared rays” did not render claim to be indefinite). See also MPEP § 2173.05(g) (8th ed., Rev. 6, Sept. 2007).
 
2173.05(h) Alternative Limitations

I.   MARKUSH GROUPS

 Subgenus Claim

II.   “OR” TERMINOLOGY

III.   “OPTIONALLY”

 
 
JOHNSON
 
The fact that a claim does not contain further limiting language is a matter of breadth, not indefiniteness. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977).

The fact that a claim is broad does not mean that it is indefinite, and even undue breadth is not indefiniteness. In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977).

2173.05(j) Old Combination [R-6]

A CLAIM SHOULD NOT BE REJECTED ON THE GROUND OF OLD COMBINATION
 
 
 
 
 
 
I.    PRODUCT-BY-PROCESS

II.    PRODUCT AND PROCESS IN THE SAME CLAIM

IPXL

The arguments give rise to an issue of claim interpretation. Namely, to which one of the statutory classes of invention are the claims directed?  The claims are “system” claims, but in order to be patentable the subject matter of a claim must fit into one and only one of the statutory claims of invention enunciated in 35 U.S.C. § 101, i.e., a process, machine, manufacture, or composition of matter. Claims cannot be directed to combinations of those classes of invention. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (claims to a combination of statutory claims of invention are not permitted and are indefinite).

IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (A single claim covering both an apparatus and a method of using that apparatus is indefinite because it is unclear what acts constitute infringement of the claim).

IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)(“Because claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.”)

LYELL

In addition, a claim purportedly directed to more than one statutory class of invention is indefinite because it is unclear what would constitute infringement of the claim. Cf. Ex parte Lyell, 17 USPQ2d 1548, 1551 (BPAI 1990) (“[A] single claim which purports to be both a product or machine and a process is ambiguous and is properly rejected under 35 USC 112, second paragraph, for failing to particularly point out and distinctly claim the invention.”); 
 
2173.05(q) "Use" Claims

 A “USE” CLAIM SHOULD BE REJECTED UNDER ALTERNATIVE GROUNDS BASED ON 35 U.S.C 101 AND 112

BOARD HELD STEP OF “UTILIZING” WAS NOT INDEFINITE
 

FRESSOLA

Compare Ex parte Fressola, 27 USPQ2d 1608 (BPAI 1993) (affirming a rejection under 35 U.S.C. § 112, second paragraph of a claim reciting a system “as disclosed in the specification and drawings herein”) with Ex parte Squires, 133 USPQ 598 (BPAI 1961) (reversing a rejection under 35 U.S.C. § 112, second paragraph of a claim reciting a font “as shown in Fig. 1”).
 

FRESSOLA

Compare Ex parte Fressola, 27 USPQ2d 1608 (BPAI 1993) (affirming a rejection under 35 U.S.C. § 112, second paragraph of a claim reciting a system “as disclosed in the specification and drawings herein”) with Ex parte Squires, 133 USPQ 598 (BPAI 1961) (reversing a rejection under 35 U.S.C. § 112, second paragraph of a claim reciting a font “as shown in Fig. 1”).
 
 

2173.06    ** > Practice Compact Prosecution < [R-9]

** >

I.   INTERPRET THE CLAIM AND APPLY ART WITH AN EXPLANATION OF HOW AN INDEFINITE TERM IS INTERPRETED

II  Prior Art Rejection of Claim Rejected as Indefinite


STEELE
 
A rejection should not be based on "speculations and assumptions." In re Steele, 305 F.2d 859, 862 (CCPA 1962).
 
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.);

WILSON

It is elementary that to support an obviousness rejection all words in a claim must be considered in judging the patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)

"All words in a claim must be considered in judging the patentability of that claim against the prior art. If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious - the claim becomes indefinite." In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
 
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