Ex parte McAward

When examining a pending application, the Office makes a prima facie case of indefiniteness under § 112(b) (pre-AIA § 112, second paragraph) by applying the broadest reasonable interpretation and explaining how the metes and bounds of the claim are not clear because it contains words or phrases whose meaning is unclear. The Board does not read Nautilus to change this approach, so it applies the Packard standard, not the court's reasonable-certainty approach. If the applicant gives no satisfactory response, the Board may sustain the rejection. No prior precedent was overruled. The decision reaffirms Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (precedential), and the approach the Federal Circuit approved in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014), after Nautilus, Inc. v. Biosig Instruments, Inc. For examiners, the Office must carry the initial burden of a prima facie case. That burden is met by a rejection applying the broadest reasonable interpretation and explaining which words or phrases are unclear, with no need to show indefiniteness under a court's higher ambiguity threshold. For applicants, a claim that is merely ambiguous can be rejected, and arguing that a skilled artisan would understand it is not enough without amendment or evidence. The Board relied on Packard, Zletz, Hyatt v. Dudas, Cuozzo Speed Techs., LLC v. Lee, and Nautilus. LEGAL TEST OR STANDARD: The Office bears the initial burden of a prima facie case that a pending claim is indefinite. It first determines claim scope under the broadest reasonable construction in light of the specification. It then shows, by a rejection explaining how the metes and bounds are not clear, that the claim contains words or phrases whose meaning is unclear. Under Packard, a claim is indefinite when it contains words or phrases whose meaning is unclear. The applicant may respond by amending or by providing evidence or explanation. If the applicant gives no satisfactory response to a well-grounded rejection, the rejection stands. The requirement is not a demand for unreasonable precision. TRIGGERING FACTS: The claims were pending in an application before the Office, subject to the broadest reasonable interpretation and the opportunity to amend. Claim 1 recited a water detector configured to be reliably installed by an untrained installer or a homeowner without a plumber or electrician. The Examiner explained that a skilled artisan could not determine the metes and bounds. The Board found the skill-level language vague, the specification gave no support for appellants' proffered definition, and the limitation added no clear structure beyond the spin-on connectors. The Board did not address indefiniteness standards in post-grant AIA trials (fn. 4). KEY QUOTE: "We do not understand Nautilus, however, to mandate a change in the Office's approach to indefiniteness in patent-examination matters in which, as discussed above, the claims are interpreted under the broadest reasonable interpretation standard and an opportunity to amend the claims is afforded." (slip op. at 9) PRIOR PRECEDENT AFFECTED: Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (precedential) is reaffirmed, and the Board says it remains Board precedent. The decision follows In re Packard, 751 F.3d 1307 (Fed. Cir. 2014), and treats Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), as not requiring a change in examination practice. PRACTICE TIP: In an appeal brief, do not argue that a claim meets a court's reasonable-certainty test or that a skilled artisan would understand the term. Amend the claim or point to specification support that defines the term and shows how to tell whether a claimed structure satisfies it. For examiners, state the broadest reasonable interpretation and explain which words or phrases are unclear.