Ex parte Miyazaki

When a claim pending before the USPTO is amenable to two or more plausible claim constructions, the Board may hold it indefinite under 35 U.S.C. § 112, second paragraph, and need not find it "insolubly ambiguous" or "not amenable to construction" as post-issuance courts require. The Board adopts this lower ambiguity threshold for claims during prosecution, consistent with the broadest reasonable interpretation standard, because the applicant can amend to define the metes and bounds precisely. No prior Board precedent is named as addressed on this issue; the Board acknowledges the Federal Circuit has never set a different indefiniteness standard for pending claims than for issued ones. Examiners and the Board can now reject pending claims as indefinite on a showing of two or more plausible constructions, which is much easier than showing the claim is insolubly ambiguous. Applicants and appellants cannot rely on the court-based rule that ambiguous claims are read narrowly to preserve validity, and must amend to resolve ambiguity, as here where claims on a height relative to a user of unspecified position and on a "sheet feeding area" fell. The Board relied on Datamize, Exxon Research and Modine as the high post-issuance standard, on In re Zletz and In re Morris for the applicant's duty to claim precisely, and on dicta in Exxon Research and Halliburton Energy Servs. suggesting examiners may demand clarification. LEGAL TEST OR STANDARD: The Board stated that it employs a lower threshold of ambiguity than post-issuance courts: rather than requiring that the claims are insolubly ambiguous, it holds that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. The underlying definiteness test is whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. TRIGGERING FACTS: The claims were pending in an application on appeal from a final rejection, so the applicant could still amend. Claim 1 and others recited the feeding unit height relative to a user about 170 cm tall without reciting the positional relationship of user and printer, so the claim imposed no real height limit. The term "sheet feeding area" had two plausible meanings, one from the specification and one from ordinary meaning, and neither made sense with the rest of the claims. A claim that fixes the relative positions, as claim 13 did with both at ground level, avoids the first problem. KEY QUOTE: "As such, we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts." (p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board distinguishes Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986), because the claim there referenced a well defined reference area, and declines to apply the post-issuance standard of Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005), to pending claims. PRACTICE TIP: Do not argue that an ambiguous pending claim is definite because it is not insolubly ambiguous or because it could be read narrowly to preserve validity. Instead amend to remove each plausible alternative reading, such as by reciting the positional relationship of reference objects, or defining a term like "sheet feeding area" consistently with the claims.