indefiniteness

§ 112 Indefiniteness for Mixing Claims to Apparatus and Method

Claims in a patent directed to medical diagnostics were indefinite under 35 U.S.C. §112(b) and Nautilus, Inc. v. Biosign Instruments, Inc. (S. Ct. 2014), said a court in granting summary judgment of invalidity. Lecat’s Ven… Read More

“Program,” “UI Code,” Not Means-Plus-Function Terms

The Federal Circuit has held that claim terms “program” and “user interface code,” as used in the phrases “program that can operate the movement of the pointer” and “user interface code being configured to detect one… Read More

Beware Indefiniteness under Williamson and 35 U.S.C. §112(f)

Functional patent claim language not only justified an Examiner’s indefiniteness rejections under 35 USC § 112(b), but also justified a new ground of indefiniteness rejection in In re Xie, Ex parte Appeal 2017-000540, Applicati… Read More

“Minimal Redundancy” Makes Patent Claim Indefinite under § 112

The phrase “minimal redundancy” in a patent claim was indefinite under 35 USC § 112 where the patent specification inconsistently described levels of redundancy achieved by its system.  Berkheimer v. HP, Inc., No. 2017-1437… Read More

Functional Language Found Definite by CAFC

In BASF Corporation v. Johnson Matthey (decided Nov. 20, 2017), the Court of Appeals for the Federal Circuit held that a “composition…effective to catalyze” is definite under the standard set forth in Nautilus v. Biosig.  A… Read More

Precedential PTAB Ex Parte Decision on Indefiniteness

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 US… Read More

PTAB: Filled May Be Indefinite, Unfilled Is Adequately Described

Tinnus Enterprises, LLC (“Tinnus”), owner of U.S. Patent No. 9,527,612 B2 (“the ‘612 patent”) recently suffered a setback when the U.S. Patent Trial and Appeal Board ordered institution of a post-grant review of the… Read More

Words of Approximation: The Fine Line between being Definite or Indefinite in Prosecution

A search of PTAB ex partes appeals over the past three months shows that relatively few decisions have dealt with words of approximation.  The two recent ex partes decisions discussed below both determine whether the claim term … Read More

Fed. Cir: Patent Claim Not Indefinite System/Method Hybrid

A patent claim directed to a system comprising multiple elements including a “CRM software application” that according to the claim “presents,” “receives,” and “generates” various data was not indefinite under 35 U… Read More

Knowledge of Skilled Artisan Can Beat Patent Indefiniteness

Knowledge of a person of skill in the art was recently used to revive claims that had earlier been found indefinite under 35 U.S.C. § 112.  Delaware District Court Judge Leonard P. Stark granted a motion for reargument on the is… Read More

Upcoming Webinar

We are delighted to kick off the first B2 IP Webinar of 2019 with David Hannon, Of Counsel at Bejin Bieneman, who will provide an outline of issues for decision by a US brand owner in its pursuit of trademark protection in China. Mr. Hannon will dis…Register

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