Indefiniteness for Multiple Plausible Claim Constructions
The Board stated that "we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold 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. " Miyazaki, slip op. at 11-12.
The Board remarkably departs from more than a century of precedent that permits plural interpretations . . . A unique aspect of the Board's opinion is that it provides a ground for invalidity under 35 USC § 112, ¶ 2, that is applicable only in the case of a pending application and not a granted patent. Presumably, a perfectly valid claim in a granted patent that is put through a reissue proceeding to consider a different issue would now be subject to rejection under 35 USC § 112, ¶ 2.
The Board's rationale for its departure: "The USPTO, as the sole agency vested with the authority to grant exclusionary rights to inventors for patentable inventions, has a duty to guard the public against patents of ambiguous and vague scope. Such patents exact a cost on society due to their ambiguity that is not commensurate with the benefit that the public gains from disclosure of the invention. The USPTO is justified in using a lower threshold showing of ambiguity to support a finding of indefiniteness under 35 U.S.C. § 112, second paragraph, because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent." Id., slip op. at 12.
4 Comments:
"Presumably, a perfectly valid claim in a granted patent that is put through a reissue proceeding to consider a different issue would now be subject to rejection under 35 USC § 112, ¶ 2."
Add the "new light" as to the question of patentability that this BPAI decision makes precedential and the in Re Swanson case and the weapon of re-exam and rejections under 35 USC § 112, ¶ 2 open floodgates of litigation/uncertainty and backlog to the USPTO.
As noted on Patently-O:
Name the case:
"Because no distinction is made in [the Statute] between prosecution in the PTO and enforcement in the courts, or between validity and infringement, we hold that [the Statute] applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as a part of a validity or infringement determination in a court."
Whether means-plus-function or not, we are talking about interpretations of claim language are we not?
Posted by: Noise above Law | Dec 11, 2008 at 05:08 PM
0730jejeMais cette nike air presto golden beige fois, vous aurez besoin d'une paire nike air max america pas cher de haute qualité. Par baskets new balance junior conséquent, il est en asics gel lyte iii lovers and haters fait recommandé pour la nike free rn flyknit homme avis réparation de bricolage et nike air max thea premium desert camo net a porter le travail de modélisation dans new balance 999 bleu marine et autour de la maison. air jordan 11 low concord price
supreme clothing
yeezy shoes
goyard handbags
golden goose
moncler jackets
supreme clothing
goyard handbags
golden goose sneakers
golden goose
moncler jackets
Post a Comment
<< Home
© 2004-2007 William F. Heinze