The MPEP’s indefiniteness standard in § 2173.05(e), namely, that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” has been approved by the Federal Circuit as a reasonable implementation of the USPTO’s examination responsibility as applied to § 112(b). “Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO, upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection.”
Background / Facts: The application on appeal here from rejection at the PTO covers a coin change holder. In the course of affirming the examiner’s indefiniteness rejection, the Board applied the review standard set forth in MPEP § 2173.05(e), namely, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” Rather than attempt to provide a satisfactory response to the indefiniteness rejection, the applicant argued that the Board should have applied an “insolubly ambiguous” standard to his claims, which is the standard traditionally applied by courts to post-issuance claims, although it is currently being evaluated by the Supreme Court.
Issue(s): Whether the MPEP’s indefiniteness standard is “a reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO.”
Holding(s): Yes. While the court declined to establish a single indefiniteness standard for pre-issuance claims, either consistent with or distinct from post-issuance claims, it acknowledged that the MPEP standard used by the PTO is “here approved.” In short, “[w]e conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear. On the facts before us, this holding suffices to uphold the rejection that occurred here.”