Categories: 112 - Definiteness
      Date: May 13, 2014
     Title: In re Packard: § 112(b) Standard Different During Examination of Patent Application
Category: 112 - Definiteness   
 By: Jesus Hernandez, Blog Editor/Contributor 
TitleIn re Packard, No. 2013-1204 (Fed. Cir. May 6, 2014).
IssueThis case raises an important question: what standard for indefiniteness should the U.S. Patent and Trade- mark Office (“USPTO”) apply to pre-issuance claims? The parties point to no case in which we previously have addressed this question.
In re Packard at *2.
HoldingWe conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or other- wise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.
Id. at *7.

Procedural HistoryThe Patent Trial and Appeal Board (“Board”) held Mr. Packard’s applied-for patent claims indefinite, and therefore not in compliance with the statutory drafting requirements of 35 U.S.C. § 112(b), which provide that the specification conclude with “one or more claims particularly pointing out and distinctly claiming” the subject matter of the invention.1 Mr. Packard, on appeal to this court, insists that the Board misapplied the standard of indefiniteness by finding his claims indefinite on grounds that they “contain[ ] words or phrases whose meaning is unclear.” J.A. 14.
In re Packard at *2.
Legal Reasoning (O’Malley, Plager, Taranto) (per curiam)
Example Claim at Issue34. I claim a small thin uniformly flat plane rectangular coin holding card [c]omprising side edge retainers, a closed side retainer, small inclined/sloped end protrusions, multiple raised parallel, straight and double flanged channel/row separators, small flexible protruding retainers on the top side ends of the channel/row separators, all of which are arranged on the upper surface of the card such that a various denomination of coins can be held and retained on the card within a respective channel/row and can slide freely within the double flanges and slightly above the flat surface of the card and can also be stored obliquely partially overlapping.
In re Packard at *4-5.
Opportunity to Rebut Prima Facie Case[I]ndefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an issued patent. See Exxon Research & Eng’g v. United States, 265 F.3d 1370, 1380 (Fed. Cir. 2001). It makes good sense, for definiteness and clarity as for other validity requirements, for the USPTO initially to reject claims based on a well-founded prima facie case of lack of clarity (in its several forms) based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history. Then, if the applicant does not adequately respond to that prima facie case, to confirm that rejection on the substantive basis of having failed to meet the requirements of § 112(b). Furthermore, we can reach that conclusion and decide the present case without regard to the proper formulation of the judicially-applied indefiniteness stand- ard that may be appropriate for post-issuance assessment of indefiniteness, a matter currently under review by the Supreme Court. See Nautilus, Inc. v. Biosig Instruments, Inc., 715 F.3d 891 (Fed. Cir. 2013), cert. granted, 82 U.S.L.W. 3195 (U.S. Jan. 10, 2014) (No. 13-369).
In re Packard at *9.
§ 112(b) Analysis During ProsecutionGiven the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO, upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection. That approach decides this case, because Mr. Packard did not offer a satisfactory response to well- grounded indefiniteness rejections in this case. The examiner here, having ample grounds, set forth a variety of ways in which he found the claims imprecise or confusing, sometimes not even understandable, considering them in light of the written description. […] Mr. Packard did not respond adequately to this group of claim language problems. He ignored some entirely. As to others, he offered brief explanations of what he thought certain material in the written description and figures showed. But he did not focus on the claim- language difficulties, nor did he propose clarifying changes or show why, on close scrutiny, the existing claim language really was as reasonably precise as the circumstances permitted. […]
Id. at *11 (internal citations omitted).
We affirm the Board’s decision on indefiniteness and approve the Board’s application of the standard on which it is based.
In re Packard at *13.
PLAGER, Circuit Judge, concurring. In re Packard, Plager Op., at *1.
USPTO Interpretation of 112(b) During Examination is Different
[T]he USPTO reads the statutory requirement that claims “particularly point[ ] out and distinctly claim [ ] the subject matter . . .” to mean that ambiguity in claiming, whether intended or inadvertent, is not acceptable. […] The patent examiner’s duty is to insist that the applicant remove the perceived ambiguity by more precisely defining the scope of the claim. And should an examiner’s rejection on grounds of noncompliance with the statute be taken up on appeal to the Board, the Board will enforce the same standard. […] From its response to Mr. Packard, I understand the Board position to be that it applies the traditional test to claims proposed by a patent applicant, namely, whether what is claimed is reasonably understood by one of ordinary skill in the art. However, in applying this test the Board does so in a manner—the “lower threshold”—that is uniquely applicable to the pre-issuance situation.
In re Packard, Plager Op., at *16.
[O]ur precedents make clear that, whether our standard is thought to be either the first option—“insolubly ambiguous” (however understood)—or the second option—the traditional “one of ordinary skill” test—discussed earlier, the USPTO’s application of the traditional standard goes well beyond what this court is known to apply to claim interpretation when the issue is post-issuance compliance with § 112(b).
Id. at *17.
PTO may interpret 112(b) As Necessary for Examination Purposes[T]here are no legal obstacles to the USPTO’s proposed interpretation, and there are compelling reasons why, as a policy matter, this court should not preclude or otherwise interfere with the USPTO carrying out its full responsibilities under the Patent Act. Further, there is no reason why those trained and employed in the art of patent and patent claim drafting cannot comply with the USPTO requirements, recognizing that the nature of the invention and the particular art involved will affect the degree to which precision in language is possible.
Id. at *23-24.
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