USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)

The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change.

Under the PTO examination standard, a claim is rejected as indefinite if the claim contains words or phrases whose meaning is unclear. See Ex parte McAward, No. 2015-006416, at 5.  This standard is lower than the standard adopted in Nautilus, which held that in litigation, a claim is indefinite only if the claim, considered in light of the specification and the file history, fails to inform those skilled in the art about the scope of the invention with reasonable certainty. Nautilus, 134 S.Ct. at 2129.

The PTAB justified this difference in the two standards by observing that (1) the PTO performs an examination role on a developing record, not an adjudicatory role on a fixed record, (2) the PTO applies a broad claim construction standard during that period, and (3) during initial examination, the applicant “may freely amend claims.” Ex parte McAward, No. 2015-006416, at 8.

The PTAB expressly held that it was not addressing in this decision the approach to indefiniteness that the PTO follows in IPRs or other post-grant trial proceedings under the America Invents Act (AIA). Id. at 11 n.4.  However, the rationale adopted here would seem to apply largely the same to AIA proceedings, where the PTO uses the same broad claim construction standard and where at least some scope of claim amendment is contemplated by the AIA rules.  While only time will tell, it therefore does not appear likely that Nautilus will have any significant impact on the PTO’s standard for indefiniteness in AIA reviews either.