In an Ex parte McAward, Appeal No. 2015-006416 (published August 25, 2017), the Patent Trial and Appeals Board ruled that the Supreme Court opinion in Nautilus, Inc. v. Biosig Instruments, Inc. does not mandate a change in the USPTO’s approach to indefiniteness during patent examination. The PTAB has designated this case precedential, which is rarely done with ex parte decisions.
By way of background, the Supreme Court decision in Nautilus set forth a new standard for indefiniteness – that the claims must inform a person of skill in the art of the invention with “reasonable certainty.” In Ex parte McAward, the PTAB outlined that, in determining indefiniteness, the Office first determines the scope of the claims based on the broadest reasonable interpretation. Based on the broadest reasonable interpretation, the Office establishes a prima facie case of indefiniteness by explaining how the metes and bounds of the claim are not clear because the claim contains words or phrases whose meaning is unclear. This is the standard set forth in In re Packard, 751 F.3d 1307 (Fed. Cir. 2004) and is described in MPEP §2173.02(I).
The PTAB noted that the broadest reasonable interpretation standard differs from the claim interpretation standard used during patent litigation in federal courts, as recognized by Supreme Court in Cuozzo Speed Techs., LLC v. Lee. The broadest reasonable interpretation during prosecution leads to an interactive process for resolving ambiguities and, “[t]he different approaches to indefiniteness before the Office and the courts stem not from divergent interpretations of §112, but from the distinct roles that the Office and the courts play in the patent system.” Specifically, the patent record is in development, and not fixed, during prosecution, and the applicant is free to clarify the record. The PTAB stated, “We do not understand Nautilus, however, to mandate a change in the Office’s 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.”
As a point that is potentially useful during prosecution, the PTAB reiterated the language in Packard that “this requirement is not a demand for unreasonable certainty” and “does not contemplate in every case a verbal precision of the kind found in mathematics.” Instead, the requirement “necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.”
This decision is not surprising, considering that on a related issue, the PTO already held that Packard, not Nautilus, applies to Post Grant Reviews.