Board reverses indefiniteness of claim that references a published patent application

Takeaway: The Examiner rejected as indefinite a claim which referred to a published patent application: "A nonwoven mat ... suitable for use as the scored and folded vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U.S. Patent Application No. 20020020142 filed April 23, 2001 ..." The Examiner cited Ex parte Fressola as authority, asserting that Fressola allowed incorporation by reference "only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a separate document into the claim. The Board reversed the rejection. The Board distinguished Fressola on the grounds that Fressola's claim included no limitations other than a reference to Fressola's specification and drawings. (Ex parte Jaffee, PTAB 2012.)

Details:
Ex parte Jaffee
Appeal 2010011413; Appl. No. 10/718,007; Tech. Center 1700
Decided:  March 15, 2012

The application described a fibrous mat and a method of manufacturing the mat. According to the abstract, the disclosed mats are flame resistant, have good strength after being scored and folded, and are particularly useful in making lightweight, compressible ceiling panels.

The original claims to the mat specified only physical properties of the fibers and of the curing resin. To overcome prior art, the Applicant amended during prosecution to specify a number of properties of the mat itself. The Applicant also argued that "the mats of the invention were designed for ceiling tiles of the type described in U.S. 20020020142, as pointed out in the specification," while the mat in the primary reference did not have these properties. The Examiner responded by commenting that the claims were directed to a mat rather than a ceiling tile, and the claims themselves did not specify that the mat meets the requirements of the vertical, folding panels in the ceiling tile of  U.S. 20020020142.

In response, the Applicant further amended one of the independent claims so that it referred to the ceiling tile. After this amendment, claim 91 read:

      91. A nonwoven mat having a basis weight of 2 to about 2.6 lbs/100 sq. ft, a high flame resistance and unexpected excellent tensile strength, flex and recovery properties after scoring and folding and suitable for use as the scored and folded vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U.S. Patent Application No. 20020020142 filed April 23, 2001, including the ability to, after being scored, folded, and compressed, to spring back to the original shape and orientation ...
      the fibrous nonwoven mat comprised of
      a blend of fibers comprising about 84 to about 92 wt. percent of chopped glass fibers having an average fiber diameter in the range of about 13 to about 17.5 microns and a length in the range of about 0.7 to about 1.1 inches and about 8 to about 15 wt. percent of polyester fibers having a length of about 0.25 +/0.07 inch,
     the blend of fibers being bound together with about 20 to 30 wt. percent, based on the dry weight of the fibrous nonwoven mat, of a cured resin consisting essentially of a resin derived from an aqueous homopolymer or copolymer of polyacrylic acid and a polyol, with or without a polycarboxy polymer,
     the fibrous nonwoven mat having a Taber Stiffness of at least about 50 gram centimeters and passing the National Fire Protection Association's (NFPA) Method #701 Flammability Test.

 The next Office Action included an indefiniteness rejection for claim 91 because "claims may not incorporate another publication, but instead should clearly spell out the intended structure, composition, etc. of the invention." The rejection indicated that the limitation was "interpreted as intended use limitation that does not contribute to the structure or chemistry of the claimed article."
After several more rounds in which the Examiner maintained the prior art and indefiniteness rejections, the Applicant appealed both.

In arguing against indefiniteness,the Applicant first noted that the Examiner had cited no authority that prohibited a claim from referring to a published patent application. Next, the Applicant noted that claim 51 was not rejected as indefinite, even though it pointed out with less particularity, by including the "spring back to the original shape" language without reference to the publication. Third, the Applicant argued that reference to a patent publication was a concise way of describing specific "spring back" properties for which no standard test yet existed. Finally, the Applicant addressed a position taken by the Examiner in prosecution: that a claim should be self-contained and understandable by a POSITA without guidance from a separate document. According to the Applicant, "it has long been accepted and practiced to use shorthand terms and identifiers to incorporate or explain limitations in the claims." Moreover, claim 51 referenced "the NFPA Method #701 Flammability Test" and yet was not subject to an indefiniteness rejection.

In the Answer, the Examiner provided authority for the indefiniteness rejection. The Examiner relied on Ex parte Fressola (27 USPQ2d 1608, 1609 (Bd. Pat. Appl. & Inter. 1993) for the proposition that "incorporation by reference is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a separate document into the claim. Incorporation by reference is a necessity doctrine, not for applicant's convenience." (Emphasis added.) The Examiner asserted that here, "there is a practical way to define the invention in words as demonstrated in instant claim 51."

The Board reversed the prior art rejection and the indefiniteness rejection. In discussing the indefiniteness rejection, the Board distinguished Ex parte Fressola, where the claim relied entirely on the entire specification and figures: "42. A system for the display of stereographic three-dimensional images of celestial objects as disclosed in the specification and drawings herein." In the instant case, the reference "merely sets forth a capability requirement of the mat described in the claim," and the Examiner failed to explain "how reciting the capability requirement in that form causes the claim to fail to circumscribe a particular area with a reasonable degree of precision and particularity."

My two cents: The Board got this one wrong. The claim here is different than Fressola, but is still indefinite. Patent applications disclose a lot of things, so claiming "as disclosed in patent publication X" is almost certainly indefinite. Tell me exactly what characteristics are included in a mat "suitable for use as the scored and folded vertical webs ... in U.S. 20020020142."

Is it a tile where "the dividers are elongated cells having collapsible sides so that when lateral or transverse pressure is applied to the cell in predetermined directions it will collapse into a shallow space." The publication says one embodiment contains such dividers.

Is it a tile where the dividers are "of an elongated cellular or tubular configuration." The publication says one embodiment contains such dividers.

"The inquiry under section 112, paragraph 2, now focuses on whether the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the patentee's right to exclude." Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). Jaffee's claims do not provide such notice to the potential infringer or the public.

Related posts: I discussed Ex parte Fressola in another blog post: BPAI holds that claim which includes figure is not indefinite.