USD1,054,889 - Issue Date: December 24, 2024
Rejection: The examiner rejected the design claim under 35 U.S.C. 112, A and B paragraphs, as the claimed invention was not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and failed to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Fig. 3 of the claim as filed:
The examiner asserted that the squared surfaces shown in the bottom view of applicant’s claim showed areas of indefiniteness in that a person of ordinary skill would not be able to tell: (1) the spatial relationship between either of the two squares or how they relate geometrically or how they relate to the immediately surrounding surfaces geometrically; (2) the surface shape and configuration of these surfaces, as one cannot understand if they are flushed in relationship to one another or exist in some other spatial or geometric configuration; and (3) whether any of the surfaces are perpendicular to the line of sight to one another or exist in some other geometric relationship to one another.
Concerning the standard for indefiniteness used, the examiner quoted and cited Ex Parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Int. 2008):
“. . .we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold 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 U.S.C. § 112, second paragraph, as indefinite.”
Applicant’s Response: The applicant converted the indeterminate areas to broken lines:
Examiner’s Reply: The examiner withdrew the rejection.
Comments:
An indefiniteness rejection under 35 U.S.C. § 112 for failure to disclose the depth of certain design elements is one of the most common rejections in design patent prosecutions. The standard used for indefiniteness during prosecution at the USPTO is stricter than the standard used by reviewing courts.
During prosecution, the standard for indefiniteness is guided by the decisions in Ex Parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Int. 2008) and In re Packard, 751 F.3d 1307 (Fed. Cir. 2014). In Miyazaki, the USPTO applied a “broadest reasonable interpretation” (BRI) standard during prosecution. Under this standard, claims are indefinite if they are “amenable to two or more plausible constructions.” Id. at *11, 12. The Miyazaki standard is different from the indefiniteness standard formerly used by the Federal Circuit, which was “[o]nly claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted). The “insolubly ambiguous” standard was abandoned by the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) (discussed below).
In In re Packard, the Federal Circuit held 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).” Id. at 1311.
The Miyazaki and Packard decisions work together to ensure clarity in patent claims during prosecution at the USPTO. Miyazaki established that claims can be rejected as indefinite if they are amenable to two or more plausible constructions under the broadest reasonable interpretation (BRI) standard. This approach allows examiners to proactively identify ambiguities without needing to resolve all possible interpretations. On the other hand, Packard reinforced the USPTO’s authority to reject ambiguous claims and emphasized the applicant’s duty to ensure claims are clear and precise. Together, they empower examiners to address indefiniteness early and require applicants to amend or clarify claims when rejections arise.
This collaborative system ensures that patents are clear and enforceable by catching issues during prosecution. By requiring clarity at the examination stage, these rulings reduce the likelihood of indefinite claims being issued, minimizing disputes and invalidation risks in post-issuance litigation.
In contrast, reviewing courts (including post grant reviews) apply the standard set forth in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), which requires that a patent is invalid for indefiniteness if its claims, read in light of the specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Id. at 901. For design patents, this means that the design must be understood with reasonable certainty by one skilled in the art, viewing the design as would an ordinary observer. In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). Courts have held that errors and inconsistencies in design patent drawings do not render a claim indefinite if they do not preclude the overall understanding of the drawing as a whole. Id. at 1375, 1376.
The Nautilus test is less strict because it applies to issued patents, where the presumption of validity favors the patentee, and some degree of interpretive leeway is permissible. In contrast, the Miyazaki and Packard tests apply during prosecution where the USPTO is tasked with ensuring clarity before a patent is granted, requiring stricter scrutiny to prevent vague claims from entering the patent system.
Having two different standards for indefiniteness during prosecution and litigation might seem confusing, but it reflects the distinct goals of these stages. During prosecution, the stricter standard ensures that patent claims are drafted with maximum clarity before a patent is granted. This proactive approach requires applicants to address any ambiguities under the BRI standard. In contrast, litigation involves issued patents that carry a presumption of validity. The Nautilus standard is less strict, requiring claims to provide reasonable certainty to those skilled in the art while allowing some flexibility for inevitable ambiguities in complex technologies.
This distinction is justified by the different burdens of clarity in each phase. During prosecution, the applicant has the responsibility to ensure claims are precise, while the USPTO ensures that issued patents meet high standards of clarity. Once a patent is issued, the presumption of validity shifts the burden to challengers in litigation to prove indefiniteness. The stricter prosecution standard helps improve the overall quality of patents, reducing disputes over vague claims. Meanwhile, the more lenient litigation standard balances the need to enforce patents with the recognition that perfect clarity in claim language is not always achievable. Together, these standards work to maintain a fair and effective patent system.
