2173

2173 Claims Must Particularly Point Out and Distinctly Claim the Invention

I. BROADEST REASONABLE INTERPRETATION

II. DETERMINE WHETHER OR NOT EACH CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, sixth paragraph

2173.02 Determining Whether Claim Language is Definite [R-10-2019]

JOHNSON

The Examiner thus neglects the "presuppos[ition] that a patent applicant defines his invention in the claims, not in the specification." Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002). The Examiner cannot, as here, remove a claim restriction to address a lack of specification support. See, e.g., Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001) ("[C]laims can only be construed to preserve their validity where the proposed claim construction ... does not revise or ignore the explicit language of the claims.").

MEDRADINC

See also, MedradInc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.”)(internal citations omitted). As such, we agree with Appellant that the Examiner’s interpretation of this claim phrase is overly broad.

POWER-ONE

“An invention is not obvious just ‘because all of the elements that comprise the invention were known in the prior art;’ rather a finding of obviousness at the time of invention requires a ‘plausible rational [sic] as to why the prior art references would have worked together.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)).

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).

MIYAZAKI

In determining whether a claim is indefinite, "we employ a lower threshhold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts." Ex Parte Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precendential). Our precedential Miyazaki decision "hold[s] 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 USC 112, second paragraph, as indefinite." Id. See also In re Packard, 751 F.3d 1307, 1311 (Fed. CIr. 2014). We employ this standard because of our "duty to guard the public against patents of ambiguous and vague scope" and "because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent." Id. at 1211-12.

NAUTILUS, PACKARD

The definiteness requirement “strikes a ‘delicate balance’ between ‘the inherent limitations of language’ and providing ‘clear notice of what is claimed.’” Sonix Tech. Co. v. Publ’nsInt’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Nautilus, Inc. v.Biosig Instruments, Inc., 572 U.S. 898, 909 (2014)). Due to the need for “particular[ity]” and “distinct[ness],” claim language that “is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention” warrants a rejection under § 112(b). In re Packard, 751 F.3d 1307, 1311, 1313 (Fed. Cir. 2014)

We apply the test for indefiniteness approved by the Federal Circuit in In re Packard, i.e., "[a] claim is indefinite when it contains words or phrases whose meaning is unclear." 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam) ( citing Manual of Patent Examining Procedure ("MPEP") § 2173.05); see also id. at 1313 (stating that "claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms"); MPEP § 2173.02(1). We recognize that after the Packard decision, the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), articulated a differently worded definiteness requirement in the context of patent-infringement litigation. Nautilus, 134 S. Ct. at 2129 (requiring "that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty"). Nautilus does not, however, mandate a change in the approach to indefiniteness in patent-examination matters in which, as discussed above, the claims are interpreted under the broadest reasonable interpretation standard and an opportunity to amend the claims is afforded. See Packard, 751 F.3d at 1323-24 (Plager, J., concurring) (recognizing and approving the reasons enumerated by the Office regarding why the Office review of pending claims for indefiniteness uses "a lower threshold for ambiguity than a court's"); see also Ex Parte McAward, Appeal 2015006416, 2017 WL 3669566, at *2 (Aug. 25, 2017) (precedential).

II. THRESHOLD REQUIREMENTS OF CLARITY AND PRECISION

PACKARD

The Federal Circuit has explained that indefiniteness, as a subset of claim construction, is a question of law. In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). In particular, the court held, “[a]s the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms. It is the claims that notify the public of what is within the protections of the patent, and what is not.” Id.

[The indefiniteness] requirement is not a demand for unreasonable precision. The requirement, applied to the real world of modem technology, does not contemplate in every case a verbal precision of the kind found in mathematics. Nor could it do so in a patent system that actually works, in practice, to provide effective protection for modem-day inventions. Rather, how much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.

In re Packard, 751, F.3d 1307, 1313 (Fed. Cir. 2014).

"[W]e apply the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains words or phrases whose meaning is unclear."' Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)).

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).

2173.03 Inconsistency Between Claim and Specification Disclosure or Prior Art

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).

2173.04 Breadth Is Not Indefiniteness

GARDNER

However, ‘Breadth is not indefiniteness.’ In re Gardner, 427 F.2d 786 [, 788], 57 CCPA [1207] (1970).

MILLER

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

In addition, claim limitations reciting intended use merely go to the breadth of the claim and not indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971). ...

There is little value in any tenet requiring the denial of a claim solely based on the language used to define the claimed subject matter. Id. 692–93 (“If those skilled in the art can tell whether any particular [device] is or is not within the scope of a claim, the claim fulfills its purpose as a definition.”)

The Examiner's claim construction, however, is in error because it does not account for the word "selective." Cf Application of Miller, 441 F.2d 689, 694 (C.C.P.A. 1971) ("All words in a claim must be considered in judging the patentability of that claim against the prior art.")

2173.05 Specific Topics Related to Issues Under 35 U.S.C. 112, Second Paragraph

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).

Our reviewing court has instructed that "[i]t is the applicants' burden to precisely define the invention, not the PTO's. See 35 U.S.C. § 112 ¶ 2 . . . . [T]his section puts the burden of precise claim drafting squarely on the applicant." In re Morris, 127 F.3d 1048, 1056 (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

INTERVAL, EIBEL

“Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).

Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370—71 (Fed. Cir. 2014) (terms of degree require some measure from a baseline.)

Appellants' use of "e.g.," instead of "i.e.," reasonably indicates that a file merely is a non-limiting example of a storage artifact. See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014) ("Had [a certain] phrase been cast as a definition instead of as an example-if the phrase had been preceded by "i.e." instead of "e.g."-then it would help provide the clarity that the specification lacks.") (emphasis added).

Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. Interval Licensing LLC v. AOL Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014); see, e.g., Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 65–66 (1923) (finding "substantial pitch" sufficiently definite because one skilled in the art "had no difficulty . . . in determining what was the substantial pitch needed" to practice the invention). Claim terms of degree “necessarily call for a comparison against some baseline.” Liberty Ammunition, Inc., v. U.S., 835 F.3d 1388, 1395 (Fed. Cir. 2016).

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

A. “About”

The mere fact that the term “about” permits some tolerance does not, in and of itself, support a rejection under 35 U.S.C. § 112, ¶ 2. In this case, the Examiner failed to explain why one skilled in the relevant art would not have been able to ascertain the scope of the claim in view of the recited term “about.” Amgen, Inc. v. Chugai Pharm. Co., Ltd, 927 F.2d 1200, 1218 (Fed. Cir. 1991) (holding that a specific activity of “at least about 160,000” was indefinite where the scope of the limitation was in doubt, “especially when . . . there is close prior art,” but cautioning that the holding “should not be understood as ruling out any and all uses of this term in patent claims”).

B. “Essentially”

C. “Similar”

D. “Substantially”

ANDREW CORP

The Examiner has not provided adequate reasoning to demonstrate that one skilled inthe art could not ascertain, in light of the Specification, whether or not a material has a coefficient of friction similar to nylon so as to satisfy the limitation in question. See, e.g., Andrew Corp. v. Gabriel Electronics, Inc., 847 F.2d 819, 821-23 (Fed. Cir. 1988). As Appellants correctly point out (Reply Br. 2), the fact that "the coefficient of friction of nylon can vary depending of [sic] the form it is in and how tightly woven it is" (Final Act. 3; Ans. 10-11) is an issue that relates to breadth, not indefiniteness.

NEHRENBERG

In addition, the term “substantially,” which is often used in conjunction with another term to describe a particular characteristic of the claimed invention, is a broad term. In re Nehrenberg, 280 F.2d 161, 165 (CCPA 1960).

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.”).

See Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Datamize has offered no objective definition identifying a standard for determining when an interface screen is ‘aesthetically pleasing.’ . . . . While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor.”).

DDR

Because the claims are not drawn to any abstract idea recognized by the courts under Alice 's first step of the inquiry, we need not determine whether an inventive concept transforms the method into a patent-eligible application. Here, we only note that "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." DDR Holdings, 773 F.3d at 1257, quoted in 2014 Interim Guidance, 79 Fed. Reg. at 74,632. Accordingly, claim I is eligible subject matter.

There is no indication that performance of the algorithm via the reducer/register would preclude performance via a generic computer. See DDR Iloldings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (recitation of generic computer elements does not make a claim directed to an abstract idea patent-eligible).

Thus, similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), “[a]lthough the claim[] address[es] a business challenge . . . it is a challenge particular to [network connectivity].” DDR, 773 F.3d at 1257.

ORTHOKINETICS

“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).

When a word of degree is used in a claim, it is incumbent upon Appellants to provide, in the specification, some standard for measuring that degree. Seattle Box Co., Inc. v. Industrial Crating & Packaging, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Here, Appellants fail to provide a standard for measuring the range of communication.

See Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F .2d 818, 826 (Fed. Cir. 1984) ("When a word of degree is used the district court must determine whether the patent's specification provides some standard for measuring that degree.").

2173.05(c) Numerical Ranges and Amounts Limitations

I. NARROW AND BROADER RANGES IN THE SAME CLAIM

II. OPEN-ENDED NUMERICAL RANGES

see, e.g., In re Mochel, 470 F.2d 638, 640 (CCPA 1972) (holding the phrase “up to” includes zero as the lower limit).

III. “EFFECTIVE AMOUNT”

In sum, we find the evidence on this record favors Appellants. Claims are not indefinite simply because they do not describe the invention using numerical values. See In re Mattison, 509 F.2d 563, 565 (CCPA 1975).

2173.05(d) Exemplary Claim Language ("for example," "such as")

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

PORTER

But, as argued by Appellant (Reply Br. 1–3), the Examiner does not explain how “the result” is amenable to two or more plausible claim constructions, or otherwise how the scope of claim 16 would not be reasonably ascertainable by the skilled artisan. See Ex parte Porter, 25 USPQ2d 1144, 1145 (BPAI 1992) (“controlled stream of fluid” provided reasonable antecedent basis for “the controlled fluid”). As such, we find the Examiner has not provided sufficient evidence or technical reasoning to show that the limitation “the result” renders claim 16 indefinite.

BOSE

“[i]nherent components of elements recited have antecedent basis in the recitation of the components themselves.” See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001).

See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359, 61 USPQ2d 1216, 1218-19 (Fed. Cir 2001) (holding that recitation of "an ellipse" provided antecedent basis for "an ellipse having a major diameter" because "[t]here can be no dispute that mathematically an inherent characteristic of an ellipse is a major diameter")

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).

2173.05(f) Reference to Limitations in Another Claim

2173.05(g) Functional Limitations [R-3]

HYATT

We add that a claim must be read in accordance with the precepts of English grammar. In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983).

INNOVA

In Innova/PureWater Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117–20 (Fed. Cir. 2004), the court noted that the phrase “operatively connected” is “a general descriptive claim term frequently used in patent drafting to reflect a functional relationship between claimed components,” that is, the term “means the claimed components must be connected in a way to perform a designated function.”

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).

A claim construction analysis must begin and remain centered on the claim language itself. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir 2004)

Indeed, claims generally are not limited to any particular embodiment disclosed in the specification, even where only a single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004).

We are persuaded of Examiner error, because the Examiner has not properly identified a teaching in the cited references for both the claimed backplane and the claimed switching node base unit. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (“[W]hen an applicant uses different terms in a claim it is permissible to infer that [the] different terms [] reflect a differentiation in the meaning of those terms.”).

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

The claim does not omit structure that provides for the recited function but instead the functional language further characterizes the structure of claim 1. See, e.g., In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”).

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

The test for whether a Markush group is proper is whether all of the compounds in the group have in common a functional utility and a substantial structural feature disclosed as being essential to that utility. See In re Harnisch, 631 F.2d 716, 722 (CCPA 1980).

Subgenus Claim

II. “OR” TERMINOLOGY

III. “OPTIONALLY”

2173.05(i) Negative Limitations

GRASSELLI

A negative limitation that does not appear in the Specification as filed may “introduce new concepts and violate the description requirement of the first paragraph of 35 U.S.C. 112.” Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983), aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).

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).

It is well settled that alternative elements which are positively recited in the Specification may be explicitly excluded from the claims. See In re Johnson, 558 F.2d 1008, 1019 (CCPA 1977) (“[The] specification, having described the whole, necessarily described the part remaining.”).

“If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” MPEP § 2173.05(i) (citing In re Johnson, 558 F.2d 1008, 1019 (CCPA 1977)).

...

We agree with Appellant that the facts of this case are similar to those of In re Johnson, 558 F.2d 1008 (CCPA 1977). In that case, the applicant excluded two species from the scope of its claims after losing an interference. Id. at 1013. The claims were denied an earlier filing date on the basis that the amended claims lacked adequate support in the applicant’s specification. Id. at 1014.

The court held, however, that “appellants are merely excising the invention of another, to which they are not entitled, and are not creating an ‘artificial subgenus’ or claiming ‘new matter.’” Id. at 1019. Similarly here, Appellants have merely excised from their claims three species that are admitted in the Specification to be known in the prior art. As stated by the Johnson court,

The notion that one who fully discloses, and teaches those skilled in the art how to make and use, a genus and numerous species therewithin, has somehow failed to disclose, and teach those skilled in the art how to make and use, that genus minus two of those species, and has thus failed to satisfy the requirements of § 112, first paragraph, appears to result from a hypertechnical application of legalistic prose relating to that provision of the statute. All that has happened here is that appellants narrowed their claims to avoid having them read on [the prior art].

Id.

PARKS

In response to Appellants' argument, the Examiner cites to Ex parte Parks for the proposition that "a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support." Ans. 6 (citing Ex parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993)).

...

Moreover, and contrary to the Examiner's apparent understanding, Ex parte Parks instead supports Appellants' position. The mere absence of literal support for the negative limitation "does not, in and of itself, establish a prima facie case for lack of adequate descriiptive support under the first paragraph of 25 U.S.C. 112." Ex parte Parks, 30 USPQ2d at 1236. Stated differently, the Examiner does not meet the burden in rejecting claim 24 simply by noting, without more, the lack of literal support for the negative limitation.

As stated in Ex parte Parks, however, adequate written description “does not require literal support for the claimed invention.” Ex parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993) (emphasis omitted). As such, “a lack of literal support does not, in and of itself, establish a prima facie case for lack of adequate descriptive support . . . .” Id. (emphasis omitted). “Rather, it is sufficient if the originally-filed disclosure would have conveyed to one having ordinary skill in the art that an appellant had possession of the concept of what is claimed.” Id.

2 173.05(j) Old Combination [R-6]

A CLAIM SHOULD NOT BE REJECTED ON THE GROUND OF OLD COMBINATION

see also In re Bernhart, 417 F.2d 1395, 1399-1400 (CCPA 1969) ("[I]f a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.").

2173.05(k) Aggregation

2173.05(m) Prolix

2173.05(n) Multiplicity

2173.05(o) Double Inclusion

KELLY

The Requester cites to a footnote in Intellectual Pro. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc. in support of its assertions, but the footnote merely states that the court "see[s] no reason why, as a matter of law, one claim limitation may not be responsive to another merely because they are located in the same physical structure" in reversing a district courts granting of summary judgment of invalidity. Intellectual Pro. Dev., 336 F.3d 1308, 1320, fn. 9 (Fed. Cir. 2003). The footnote in Intellectual Pro. Dev. does not stand for the proposition that a single structure can be read upon multiple claim limitations would be reasonable and correct irrespective of the facts of the case. In fact, In re Kelly, also relied upon by the Requester and cited as precedent in the above noted footnote of Intellectual Pro. Dev., makes clear that claim interpretation must be reasonable. In re Kelly, 305 F.2d 909, 915-16 (CCPA 1962) ("In a case such as this, where there is no ambiguity in the language of the claims, they should be carefully analyzed to see if they can be reasonably found to be supported by the disclosed structure. … Each claim in each case must be interpreted as broadly as its language will reasonably permit and each interpretation will depend upon the individual facts of each case. … The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.")(emphasis added).

2173.05(p) Claim Directed to Product-By- Process or Product and Process [R-5]

I. PRODUCT-BY-PROCESS

“[T]he patentability of a claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious.” In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969).

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.”)

We note that if we were to construe claim 8 to require selecting email addresses on a user computer system, the result would be a claim that impermissibly recites a method step and apparatus limitations. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).

A claim that recites both an apparatus and a method for subsequently using the apparatus is indefinite, IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), but functional language does not necessarily render an apparatus claim indefinite, UltimatePointer LLC v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016). Here, we agree with Appellant that the "applying" limitation is reasonably read to be functional language reciting a property of the claimed dispenser-applicator, not a claimed step of using the dispenser-applicator.

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.”);

PILKINGTON

"[The] patentability of a claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious." In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969).

Pilkington, In re, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969) 2173.05(o)

2173.05(q) "Use" Claims

CLINICAL PRODUCTS

Without the recitation of a positive, active step specifying how the reinforcing device for load-bearing structures is to be produced, a person of ordinary skill in the art cannot determine which production method is encompassed by the claim. See Ex Parte Erlich, 3 USPQ.2d 1011, 1107 (BPAI 1986) (“While . . . the claims need not recite all of the operating details, we do find that a method claim should at least recite a positive, active step(s) so that the claim will ‘set out and circumscribe a particular area with a reasonable degree of precision and particularity,’ and make it clear what subject matter [the] claims encompass, as well as making clear the subject matter from which others would be precluded.”) (citations omitted); see also Clinical Products Limited v. Brenner, 255 F. Supp. 131, 133 (D.C. D.C. 1966) (“[A] proper process or method claim should recite at least one process step.”).

WINKHAUS, BARKER

“That a person skilled in the art might realize from reading the disclosure that such a step is possible is not a sufficient indication to that person that [the] step is part of appellants’ invention.” In re Barker, 559 F.2d 588, 593 (CCPA 1977) (quoting In re Winkhaus, 527 F.2d 637, 640 (CCPA 1975)).

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

2173.05(r) Omnibus Claim

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”).

2173.05(s) Reference to Figures or Tables

FRESSOLA

2173.05(t) Chemical Formula

2173.05(u) Trademarks or Trade Names in a Claim

The Examiner cites to the decision in Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982), for the proposition that “[w]here a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.” (Id.)

Appellants contend the use of Java in the claims does not render the claims indefinite per se; instead “[a] basic question to be resolved is whether the use of ‘Java’ in the context of these claims and this application [is] indefinite, such that a person of ordinary skill in the art could not discern the metes and bounds of the claimed subject matter.” ...

We agree with Appellants. This case is closely analogous to Ex Parte O’Farrell, Appeal No. 2011-011075, 2014 WL 2112325, at *4 (PTAB May 19, 2014) (non-precedential). The O’Farrell panel held that the recitation of the trademark “Java” was not indefinite because “‘Java’ is a well-known and widely-used term identifying a particular programming language.” Id

2173.05(v) Mere Function of Machine

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).