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Ex Parte McAward, Appeal No. 2015-006416

| Category: Intellectual Property News

On August 25, 2017, the United States Patent and Trademark Office (USPTO) released a precedential opinion in Ex Parte McAward, holding that the Patent Trial and Appeal Board (“the PTAB”) will continue to use the standard from In Re Packard, 751 F.3d 1307 (Fed. Cir. 2014), rather than Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), when evaluating the definiteness of patent claims during pre-issuance examination.

This appeal stems from a Patent Examiner’s Final Action for U.S. patent application 13/435,655 (“the ′655 application”) that was filed by James Gerard McAward et al. (hereinafter, “McAward”).  The ′655 application disclosed a water detector that is “configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.”

In the Final Action, the Examiner rejected claims 1-20 under 35 U.S.C. § 112, second paragraph, as indefinite and claims 1-7 and 10-20 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 7,549,435 B2 (“the ′435 patent”) and U.S. Patent No. 7,403,839 B1 (“the ′839 patent”).  During prosecution, the Examiner found that the “configured” limitation, under the broadest reasonable interpretation when read in light of the specification, was “vague and unclear.”  In addition, the Examiner concluded that “a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed limitation in this claim language.” The Examiner also found the claims of the ‘655 application to be obvious in view of the combined teachings of the ′435 patent and the ′839 patent.  McAward appealed the Examinar’s decision to the PTAB.

The PTAB affirmed all the findings by the Examiner, concluding that the “claim suffers from vagueness and ambiguity” and rejected McAward’s attempts to provide clarity to the claim language. The PTAB used “the approach for assessing indefiniteness approved by the Federal Circuit in [In re Packard, 751 F.3d at 1310, 1314], i.e., ‘[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” and “claims are required to be cast in clear – as opposed to ambiguous, vague, indefinite – terms.” The PTAB’s reasoning for using this standard, rather than the standard in Nautilus, is because “[t]he lower threshold makes good sense during patent examination because the patent record is in development and not fixed, the Office construes claims broadly during that period, and an applicant may freely amend claims.”

This precedential decision from the PTAB reaffirms that the PTAB will evaluate whether a patent claim in the post-grant context is “clear” under In re Packard and that the Nautilus decision, which requires the claim to define the scope of the invention within “reasonable certainty,” does not change the PTAB’s long-standing approach to examining indefiniteness.

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