How to Support Relative Claim Terms Presented at NAPP Annual Meeting & Conference USPTO July 30, 2016
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35 U.S.C. 112(b) CONCLUSION - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
THE LAW TODAY: Nautilus, Inc. v. Biosig Instruments, 134 S. Ct. 2120 (2014) A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention.
MPEP 2173.05(b) Relative Terminology The use of relative terminology in claim language, including terms of degree, does not automatically render the claim indefinite under35 U.S.C. 112(b) or pre-aia 35 U.S.C. 112, second paragraph. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984). Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification. ( substantially equal to )
I.TERMS OF DEGREE MPEP: Terms of degree are not necessarily indefinite. Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370, 112 USPQ2d 1188, 1192-93 (Fed. Cir. 2014) (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 65-66 (1923) (finding substantial pitch sufficiently definite because one skilled in the art had no difficulty in determining what was the substantial pitch needed to practice the invention)).
BUT the next sentence of the MPEP says: Thus, when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367, 94 USPQ2d 1385, 1391 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332, 94 USPQ2d 1321, 1326 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984).
THEN, the MPEP says: If the specification does not provide some standard for measuring that degree, [then] a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). Isn t this backwards? It seems the Examiner should be searching for a standard in the art, THEN, consult the specification if there is no standard available in the art. Perhaps the Examiner could initiate an interview. Interval Licensing LLC v. AOL, Inc. (2014): Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.
Subjective terms may be indefinite: The Court in Interval Licensing held the claim phrase unobtrusive manner indefinite because the specification did not provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary.
For example, in Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992), the phrases relatively shallow, of the order of, the order of about 5mm, and substantial portion were held to be indefinite because the specification lacked some standard for measuring the degrees intended.
Use of Examples and Teachings in the Spec The claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371-72, 112 USPQ2d 1188, 1193 (Fed. Cir. 2014) (observing that although there is no absolute or mathematical precision required, [t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art ).
Interval tried to rely on a sentence in the Summary of the Invention which provided that information can be presented in an unobtrusive manner that does not distract the user from the primary interaction with the apparatus (e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus). Although the court recognized that examples in the specification may be used to support a claim term s definiteness, it declined to do so when faced with a single e.g. phrase from a lengthy written description.
When discussing the e.g. argument, the court noted that had the e.g. phrase been cast as a definition instead of as an example if the phrase had been preceded by i.e. instead of e.g. then it would help provide the clarity that the specification lacks. Explicitly citing Nautilus for the proposition that post hoc efforts to ascribe some meaning to a patent s claims are disfavored, the Federal Circuit panel noted that with this lone example, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting.
Use of Declarations Under 37 CFR 1.132 During prosecution, an applicant may also overcome an indefiniteness rejection by providing evidence that the meaning of the term of degree can be ascertained by one of ordinary skill in the art when reading the disclosure. For example, in Enzo Biochem, the applicant submitted a declaration under 37 CFR 1.132 showing examples that met the claim limitation and examples that did not. Enzo Biochem, 599 F.3d at 1335, 94 USPQ2d at 1328 (noting that applicant overcame an indefiniteness rejection over not interfering substantially claim language by submitting a declaration.
Terms that may require more work by inventors and Practitioners: About Essentially Similar Substantially Type (for example, inorganic-type catalyst )
Use of Previously Issued Patents to Argue That the Skilled Artisan Would Understand the Term For example: substantially transparent polymeric sheet. An examiner rejected this claim term as indefinite; a definition was not provided in the specification as filed. However, a search was made of this phrase in the claims of US patents, and it was found to have been used in over 9000 granted US patents in at least one independent claim. Some of the patents were in the same field or closely related fields.
QUERY: Could a drawing showing a plastic sheet as at least partially transparent (for example, writing could be seen beneath the sheet) support the phrase substantially transparent? What if there was no drawing showing this?
The asserted claims require, among other things, two electrodes to be in a spaced relationship with each other such that the system is able to detect and remove spurious electromyogram ( EMG ) signals from the electrocardiograph ( ECG ) signals (otherwise known as the heart rate). Figure 1 of the patent shows the claimed apparatus, where metal strips 9 and 11 around the tube are an example of the electrodes in a spaced relationship :
Claim drafting possible solution: two electrodes are configured such that the system is able to detect and remove spurious electromyogram ( EMG ) signals from the electrocardiograph ( ECG ) signals (otherwise known as the heart rate)
Minerals Separation v. Hyde was a process patent The composition of ores varies infinitely, each one presenting its special problem, and it is obviously impossible to specify in a patent the precise treatment which would be most successful and economical in each case. The process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its successful application, as the evidence abundantly shows. This satisfies the law.
INTERVAL S AMICUS BRIEF IN BIOSIG: Adopting Nautilus proposed standard would thus call into question innumerable patents in every area of innovation, and would make patent prosecution exceedingly difficult. The risk is substantial because patents have lengthy lifespans. It is highly likely that during that time period, a motivated challenger will be able to conjure some new interpretation of a claim term that a court may regard as reasonable. This is especially the case in emerging technological fields, where the vocabulary that describes inventions grows more precise as the discipline matures. Nautilus standard would make it far more difficult for an inventor to obtain a patent, maintain its validity, and enforce it against an infringer therefore undermining the value of both existing and future patents.
The upshot is that patent prosecution would become extremely difficult, and substantially more expensive. Inventors would likely resort to drafting more and more complex claims making patents harder to understand, and far more costly to file. This would not only impose costs upon the inventors themselves (in the form of increased fees to attorneys and the U.S. Patent and Trademark Office (PTO)), but would also substantially increase the burden on the PTO to review labyrinthine submissions designed to address every possible embodiment of the invention.
Confronted with these challenges, at least some inventors will decide that the benefits of patent protection are likely to be so short-lived or uncertain that the effort and expense of seeking a patent in the first instance are not justified. That would deprive the public of valuable knowledge and slow the pace of innovation. JLW - It would also deprive PTO personnel and patent practitioners their jobs!
FINAL NOTE: How does this impact broadest reasonable interpretation? MPEP 2111 would effectively be been eviscerated. After all, any claim term that has a broadest reasonable construction must, by definition, have more than one reasonable interpretation. broadest reasonable interpretation consistent with the specification
nn Thank you for allowing NAPP to visit the USPTO Main Office! Jeffrey L. Wendt, NAPP President