Barn door open, horse gone.

Last week, the U.S. Supreme Court heard oral arguments in Nautlius v. Biosig (see links below).  The crux of that case was that the Supremes hate hate hate the Federal Circuit's "insolubly ambiguous" test for determining whether a claim is indefinite under 35 USC 112, second paragraph.

Yesterday, the Federal Circuit issued a precedential decision in In re Packard, which relates to whether a claim is indefinite under 35 USC 112(b), the "successor" statute under the AIA to 35 USC 112, second paragraph.

Now, you might think that it's folly for the Federal Circuit to be issuing decisions construing a statutory provision that the Supreme Court has before it, especially where every indication is that the Supreme Court is determined to throw out the Federal Circuit's test for compliance with that statutory provision.

But there's a critical difference: Packard relates to the standard used by the Patent Office for determining whether a claim in a patent application is indefinite.  The Board of Appeals rejected the claims at issue on a number of grounds, including indefiniteness under 35 USC 112(b).  The standard the Board applied was that set forth in the Manual of Patent Examining Procedure:  “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”  Appellant sought to have the Federal Circuit's "insolubly ambiguous" standard applied to his pending application instead.

The Federal Circuit declined to apply the "insolubly ambiguous standard" to pending patent applications.  Instead, they enunciated the following explicit test:

We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which the 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 a claim as failing to meet the statutory requirements of sec. 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.

 (slip op at 7.)  Got that?  Couldn't be clearer, right?  The Federal Circuit has now enunciated a specific test for compliance with 35 USC 112(b) that is easy for the USPTO and patent applicants to follow.

The Supreme Court is going to hate it.