I occasionally have inventors come into my office who have drafted their own patent claims, only to receive a rejection under 35 USC 112(b), which states:
“…the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.”
A rejection on these grounds is described as rejection for a ‘lack of definiteness.’ Inventors who receive such a rejection often think that their patent is doomed, believing that the U.S. Patent Office sees their invention as a vague and undefined mish-mash. But when seasoned patent attorneys receive these rejections, we shrug and change a word or two in the claim, and confidently wait for the issue to resolve itself. Here’s why it doesn’t ruffle our feathers much.
Until recently, patent attorneys routinely used broad descriptive language in patent applications.
For a long time, the definiteness requirement didn’t mean much. Patent attorneys used broad language in applications as all the time. If a claim made sense to a patent examiner—who likely was exposed to that vocabulary in nearly every application that crossed their desk—then the patent was issued without question.
But as has often been the case with patent law in recent years, court precedents muddied the waters of what had been widely understood standards. In 2003, the U.S. Court of Appeals for the Federal Circuit began throwing out such patents. Five years later, the USPTO sent a memorandum out to examiners directing them to ask more probing questions as to the meaning of claim terms. A key part of the memo stated:
“The [Court of Appeals for the Federal Circuit] noted that claims were held indefinite in circumstances where a claim (1) recites a means-plus-function limitation without disclosing corresponding structure in the specification; (2) includes a numeric limitation without disclosing which of multiple methods of measuring that number should be used; (3) contains a term that is completely dependent on a person’s subjective opinion; and (4) if a term does not have proper antecedent basis where such basis is not otherwise present by implication or the meaning is not reasonably ascertainable.”
There’s a lot to unpack here, but it requires a bit of translation:
(1) A ‘means-plus-function’ claim is something that is defined by its action and not its structure, such as “a means for calculating,” versus “calculator.” Examiners were encouraged to ask what the means in question was. Note that that quoted section mentions claims that describe “a means-plus-function limitation without disclosing corresponding structure.” As I’ve discussed elsewhere, described claims only apply to a specified structure, hence the issue of not describing a corresponding structure.
(2) “Numeric limitations” are descriptions like “a such-and-such measuring 15 degrees.” The issue is that inventors will neglect how that angle is measured—15 degrees measured from where to where? The claims need to explain to an examiner what element or elements that measurement is relative to.
(3) A term “dependent on a person’s subjective opinion” is based on a personal opinion like, “this thing which is better than that thing.” Such a claim fails to define how something is better. For instance, a description of a “gasoline-powered engine that is better than existing engines” fails to define the nature of its superiority. Is it faster? More fuel efficient? More powerful? More resistant to wear? An inventor needs to make this distinction plain.
(4) The last is probably the most inscrutable on its surface. An “antecedent basis” has to do with how “a” “an” and “the” are used in patent claims. The first time something is mentioned, it is “a” thing, and subsequently it is “the thing.” This is an extremely easy mistake to make for someone who is inexperienced with drafting patent claims.
Since the USPTO’s 2008 memorandum, there has been increased lobbying for more scrutiny of patent applications, which has only made things more trying for novice inventors.
A good example of such advocates is Chief Judge Paul Michel, who retired from the U.S. Court of Appeals in 2010. He has since actively lobbied to “increase patent quality,” in his words. A prime example of his perspective can be found in remarks he made at the 2015 USPTO Patent Quality Summit, where he stated:
“Examiners have enormous power because they have the power to say no. If they don’t say yes, then the claim doesn’t issue; then the patent doesn’t go anywhere. And they can use that power to force amendments, to force definitions, to force clarification of scope. And they should use that to the hilt, in my opinion. And I’m not saying it’s easy, but an additional tool that’s a very strong tool, and it should be fully exploited by examiners for the benefit of everybody.”
While there is merit to this perspective, in practice it poses little more than an annoyance to patent attorneys—you have to know which hoops to jump through. However, this raises a barrier for the average inventor, making the patent process more opaque and difficult to understand. As patent law becomes more convoluted, inventors will have to educate themselves on the evolving parlance of the Patent Office.
A key difference between a patent attorney and an inventor is that the former understands that something like a definiteness rejection isn’t hostile. Such rejections are just a way for an examiner to ask for clarity, frequently because the curiosity of the examiner is provoked. Definiteness rarely kills an application, it just requires the provision of clarity in the record as to what a claim means so that examination can move on.