In re Packard

• Decision Date: 03 September 2014
• Docket Number: No. 2013–1204.,2013–1204.
• Citation: 751 F.3d 1307
• Parties: In re Thomas G. PACKARD.
• Court: U.S. Court of Appeals — Federal Circuit

751 F.3d 1307

In re Thomas G. PACKARD.

No. 2013–1204.

United States Court of Appeals,Federal Circuit.

May 6, 2014.

Rehearing and Rehearing En Banc Denied Sept. 3, 2014.

Louis W. Tompros, Wilmer Cutler Pickering Hale and Dorr, LLP, of Boston, Massachusetts, argued for appellant. With him on the brief were Proshanto Mukherji and Caitlin R. Looby.

Nathan K. Kelley, Deputy General Counsel for Intellectual Property Law and Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were Kristi L.R. Sawert and Stacy B. Margolies, Associate Solicitors. Of counsel was William Lamarca, Attorney, United States Patent and Trademark Office, of Alexandria, Virginia.

Before O'MALLEY, PLAGER, and TARANTO, Circuit Judges.

Concurring opinion filed by Circuit Judge PLAGER.

PER CURIAM.

This case raises an important question: what standard for indefiniteness should the U.S. Patent and Trademark Office (“USPTO”) apply to pre-issuance claims? The parties point to no case in which we previously have addressed this question.

The Patent Trial and Appeal Board (“Board”) held Mr. Packard's applied-for patent claims 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.¹ Mr. Packard, on appeal to this court, insists that the Board misapplied the standard of indefiniteness by finding his claims indefinite on grounds that they “contain[ ] words or phrases whose meaning is unclear.” J.A. 14. He believes that, had the Board applied an “insolubly ambiguous” standard to his claims, those claims would not have been held indefinite.

For the reasons we shall explain, we affirm the Board's rejection of Mr. Packard's claims.

Background

The application in this appeal covers a coin change holder. J.A. 24. The coin holder is a thin plastic card that has four different channels on its front surface for storing different types of coins, as shown in the patent figures reproduced below. J.A. 24.

IMAGE

Figure 1 shows a frontal view of the card and Figure 2 shows a cross-section of the card. J.A. 37.

The examiner rejected Mr. Packard's original application on three grounds: lack of adequate written description, claim indefiniteness, and obviousness. J.A. 145–47. Following this rejection, Mr. Packard cancelled all of his original claims and substituted a new set of claims numbered 28 through 37. J.A. 95–99.

Claims 28 through 37 are at issue in this appeal, of which claims 28, 29 and 34 are representative:

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.

J.A. 95–98.

The examiner, in his final rejection, again found the pending claims invalid on the same three grounds: claims 28–33 and 37 for lack of written description, claims 28–37 for indefiniteness, and claims 28–37 for obviousness. J.A. 108–14. Regarding written description, the examiner noted that, while the claims required the change holding card to be attached to a wallet, this feature was not supported by the written description. J.A. 109. 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. J.A. 109–10.

Mr. Packard appealed the examiner's final rejection to the Board, which affirmed the examiner's written description and indefiniteness rejections, while reversing the obviousness rejection. J.A. 7–19. In the course of affirming the examiner's indefiniteness rejection, the Board applied the review standard set forth in the Manual of Patent Examining Procedure (“MPEP”) § 2173.05(e), namely, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” J.A. 14. On rehearing, the Board declined to modify its decision. J.A. 2–5.

Mr. Packard appeals the Board's decision. In its response to Mr. Packard's opening brief on appeal, the USPTO focused on the indefiniteness issue, noting that, if we affirm the Board on that issue, which applies to all the claims, the adequacy of the written description, applicable to only some of the claims, becomes a moot issue. We accept the USPTO's suggestion that we address first the claim indefiniteness issue because it relates to all of the claims and it necessarily implicates the question of the content of the written description.

Actions of the USPTO are reviewed by us in accordance with the requirements of the Administrative Procedure Act. 5 U.S.C. § 701 et seq.; see Kappos v. Hyatt, ––– U.S. ––––, 132 S.Ct. 1690, 1694, 182 L.Ed.2d 704 (2012) (citing Dickinson v. Zurko, 527 U.S. 150, 152, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999)). Questions of law, as interpreted and applied by the agency, are given plenary review on appeal. Capon v. Eshhar, 418 F.3d 1349, 1351 (Fed.Cir.2005). Indefiniteness, as a subset of claim construction, is a question of law which this court reviews without deference. Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1022 (Fed.Cir.2009).

We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a).

Discussion

1.

Petitioner Packard casts his appeal on broad grounds. First, he contends that the standard applied by this court 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.

Second, Mr. Packard contends 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 (“post-issuance 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.

For the reasons we shall explain, we believe that the case before us can be resolved without addressing the broad issues raised by Mr. Packard. We conclude 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.

2.

The grounds for this holding derive from a combination of the USPTO's examination function under 35 U.S.C. § 131 et seq. and the substantive standard of 35 U.S.C. § 112(b). Congress assigned to the USPTO the responsibility to examine applications to ensure compliance with the statutory criteria for issuance of a patent. 35 U.S.C. § 131. In the USPTO, an applicant's “claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled to.” Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278, 24 L.Ed. 344 (1877).

Congress also provided for examination to be an interactive process, which it commonly is. One or more rejections or objections by an examiner based on identified problems are followed by one or more responses from the applicant that address the identified problems, whether by revisingclaims or by furnishing information and explanation that shows why the initially perceived problems are not problems after all. 35 U.S.C. § 132; see also id. §§ 133, 134. The...