In re Packard (Fed Cir. 2014) – Indefiniteness

In this case, the issue of “what standard for indefiniteness should the U.S. Patent and Trademark Office (“USPTO”) apply to pre-issuance claims” was raised.  The Patent Trial and Appeal Board (“Board”) had held that the applied-for patent claims of Mr. Packard were 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.”  The Federal Circuit affirmed the rejection of Mr. Packard’s claims.

Representative claims 28, 29, and 34 are shown below:

28. I claim a small, thin, flat plane, rectangular change holding card and wallet/billfold or purse construction with the front top side of the card comprising three raised, straight, parallel, double flanged separators and two raised, straight, parallel, double flanged side edges and a raised side edge end thereby forming four parallel, side by side, flanged coin holding channels or rows of the same length and of different widths, one for quarters, one for dimes, one for nickels, and one for pennies, that are similarly blocked at one side edge by the raised side end edge with the other side of the channel/rows open except for small, fixed, flexible, partially moveable, rubber or plastic retainers that are attached to the topside and ends of the double flanged separators such that coins can be retained on the card and yet slide freely above the surface of the card and obliquely overlap as necessary within the channel/rows between the separators while the bottom, back side of the card is constructed with a wallet, billfold or purse extending from it.

29. The change holding card wallet, billfold, purse of claim 28, wherein the change holding card is constructed as part of the wallet, billfold, or purse and affixed to a surface and contained within the wallet, billfold or purse.

34. 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.

Mr. Packard was a Pro Se applicant.

Regarding indefiniteness, the examiner pointed out that several claim limitations failed to meet the requirements of 35 U.S.C. § 112(b) because they lacked an antecedent basis or were otherwise unclear.  Mr. Packard appealed, and the Board affirmed the indefiniteness rejection (a written description rejection was also affirmed, and an obviousness rejection was reversed).

Mr. Packard contended that the standard applied by the Fed. Circuit for determining indefiniteness of a term in a claim under 35 U.S.C. § 112(b) is governed by the phrase  insolubly ambiguous.”  “Under this standard, he tells us, a claim is not indefinite if a court can give any meaning to the disputed term in the context of the claim.”   Furthermore, he contended that

the “insolubly ambiguous” standard of this court for indefiniteness is mandated not only for our use in deciding cases in which the patent has already issued and is being challenged (“postissuance cases”), but also for cases in which no patent has yet issued and in which the applied-for claims are being evaluated by the USPTO (“pre-issuance cases”). He states that this standard is more favorable to his case than the standard applied to his claims by the USPTO.

The Federal Circuit resolved the case without addressing the broad issues raised by Mr. Packard.  They concluded 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 otherwise 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. On the facts before us, this holding suffices to uphold the rejection that occurred here.

Hence, the Federal Circuit did not address the applicability of the “insolubly ambiguous” standard to pre-issuance cases, instead relying on the assertion that Mr. Packard did not provide a satisfactory response to the Examiner’s indefiniteness rejections.  According to the Federal Circuit,

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.

The Supreme Court is expected in June to provide guidance on the indefiniteness standard in its upcoming opinion in Nautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13‑369.