Thursday, May 22, 2014

Federal Circuit rules on indefiniteness standard and on "adapted to"


The recent Federal Circuit decision In re Packard looked at the standard for indefiniteness used by the PTO. During prosecution, the PTO applies the "two or more plausible interpretations" standard, per the precedential Board decision Ex parte Miyazaki. The standard applied by the courts for an issued patent is instead "insolubly ambiguous." The court in In re Packard declined to reach the larger question of whether the PTO can use this different standard, and decided the narrower question of whether the indefiniteness rejection was proper. The court affirmed the rejection because the Applicant (pro se inventor) didn't substantively respond to the indefiniteness rejection.

In re Giannelli from earlier this year was also a review of a PTAB decision, this one involving claim construction of "adapted to." The PTAB affirmed an obviousness rejection of a claim to an exercise machine, taking the position that the prior art chest press was "capable of" performing the function recited in the claim. The Federal Circuit reversed, after finding that in this particular case, "adapted to" required more than mere capability. The court relied on the specification's disclosure of embodiments that were specifically designed for rowing.

Ryan Alley's blog has thoughtful coverage of both decisions:
   In re Packard – Claim Drafting and Prosecution Lessons
   In re Giannelli – Claim Drafting and Prosecution Lessons

Ryan's blog is my favorite Federal Circuit blog because it offers many practical lessons for prosecutors. 

3 comments:

  1. Examiners are allowed to apply a different standard of claim interpretation than the Courts.
    Examiners are allowed to apply a different standard of indefiniteness than the Courts.
    Examiners already unofficially apply a different standard of obviousness than the Courts so how much longer will it be before they are officially allowed to do so?

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  2. "The court relied on the specification's disclosure of embodiments that were specifically designed for rowing. "

    I see the fed. circ. is now trying to make a new "super intended use" limitation called the "specifically designed for x intended use limitation" since they're losing on the ol software front and badly need such a type of limitation to help support their house of cards.

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