TAKEAWAY: A precedential PTAB decision about definiteness holds that the Supreme Court’s Nautilus standard of “reasonable certainty,” applicable to issued patent claims, does not change the long-standing USPTO practice of using a more stringent definiteness requirement for pre-issuance claims.
On August 25, 2017, the Patent Trial and Appeal Board (PTAB) issued an appeal decision, Ex parte McAward (Appeal 2015-006416), and designated as precedential the section on definiteness. The PTAB affirmed the Examiner’s indefiniteness rejection of the claims, and in doing so, explained why the standard of definiteness used by the USPTO is stricter than the standard used by courts.
Section 112(b) requires that a patent specification conclude with “one or more claims particularly pointing out and distinctly claiming the subject matter” of the invention. In McAward, the PTAB explained that during examination, the Office interprets pending claims using the broadest reasonable interpretation and employs an interactive process with applicants for resolving ambiguities in a claim. Consistent with this process, the PTAB applied the definiteness approach and standard approved by the Federal Circuit in In re Packard, in which examiners require pre-issuance claims “to be cast in clear – as opposed to ambiguous, vague, indefinite – terms,” and applicants are provided an opportunity to amend the claims or provide explanations in response. In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The PTAB in McAward acknowledged that after the Packard decision, the Supreme Court issued Nautilus, which held that claims must inform those skilled in the art about the scope of the invention with “reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). Importantly, however, the PTAB declined to apply the “reasonable certainty” standard, stating: “[w]e do not understand Nautilus  to mandate a change in the Office’s approach to indefiniteness in patent-examination matters in which . . . the claims are interpreted under the broadest reasonable interpretation standard and an opportunity to amend the claims is afforded.”
The McAward decision informs applicants that the USPTO does not use the Nautilus standard for pre-issuance claims. Accordingly, applicants should be prepared to face more rigorous definiteness requirements during patent prosecution and in appeals to the PTAB. Whether this more rigorous definiteness standard is applicable to post-issuance USPTO proceedings (e.g., PGRs) is a question currently before the Federal Circuit in Tinnus Enterprices LLC v. Telebrands Corp. (case number 17-1726).