Ex Parte Miyazaki : Claims Are Indefinite When ‘Amenable to Two or More Plausible’ Constructions

Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy

PTAB Decision

Ex parte Miyazaki, Appeal 2007-3300 (November 19, 2008)

Background

The main issue on appeal related to claims rejected by the Examiner on novelty and obviousness grounds.  The Board did not reach the merits of these rejections, but instead entered new grounds of rejection for indefiniteness and lack of enablement.  The technology involved a large printer that uses roll paper; the claims recited: “a sheet feeding area operable to feed at least one roll of paper, at least one sheet of paper and at least one stiff carton toward a printing unit.”  The Board concluded that, read in light of the specification, “a sheet feeding area” could have two plausible definitions (the area into which the paper is rolled or the area where the paper rests for feeding), neither of which was consistent with the other claims.

In its analysis, the Board noted that it had never before set forth a different standard of review for indefiniteness for pre-issuance pending claims as compared to post-issuance patented claims.  The Board stated that “rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions,” that claims may be rejected as unpatentable as indefinite under 35 U.S.C. § 112, second paragraph.  The Board articulated that the “lower threshold of ambiguity” for pending claims is consistent with the USPTO’s broader standard for claim construction (“broadest reasonable interpretation”) and the fact that pending claims do not have the benefit of a statutory presumption of validity as do post-issuance claims.

The Board also rejected the claims for lack of enablement under § 112, first paragraph, because the claimed “sheet feeding area” is a “purely functional recitation” (invoking 112, ¶6) without any supporting structure, material, or act disclosed in the specification to limit the claims’ scope so that these are commensurate in scope with the disclosure.  The Board stated that the claims violated the Halliburton rule because they amounted to pure functional claiming. See Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).

Issue

What is the standard for an indefiniteness rejection under 35 U.S.C. § 112, second paragraph for pending claims at the PTO?

Outcome

Since the use of the phrase “sheet feeding area” was amenable to two or more plausible claim constructions, the claims were held indefinite.  Moreover, the lack of structural support in the specification for this purely functional claim element also rendered the claims invalid for lack of enablement.

Prosecution Takeaway

The standard of an indefiniteness rejection at the USPTO is lower than at a court reviewing  post-issuance claims.  If a claim is amenable to two or more plausible claim constructions, the claim is indefinite under 35 U.S.C. § 112, second paragraph.

 

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