How to Support Relative Claim Terms Presented at NAPP Annual - PowerPoint PPT Presentation

How to Support Relative Claim Terms Presented at NAPP Annual Meeting & Conference USPTO July 30, 2016

National Association of Patent Practitioners (“NAPP”) is a nonprofit professional association of approximately 400 US patent lawyers and patent agents licensed by the United States Patent and Trademark Office (“PTO”) to write patent applications and procure patents for their clients, and other professionals such as draftspersons and paralegals, and students. NAPP is dedicated to supporting patent practitioners and those working in the field of patent law in matters relating to patent prosecution.

Mission - to provide networking, education, collegial exchange, benefits, and a collective voice in the larger intellectual property community on patent law and prosecution practice, so that patent practitioners can achieve the highest levels of competence and professionalism in their practices. Goals – Engage Lead Advocate Values - Collegiality, Strong Patents, Commitment to Excellence, Inclusiveness

NAPP members have some of the most extensive and intimate experience with the day-to-day reality of patent examination at the PTO and the impact of that process on inventors, especially smaller applicants such as start-up companies and individual inventors with less political influence. NAPP and its members have a corresponding interest in the fairness, efficiency, and predictability of patent examination.

 35 U.S.C. 112(b) CONCLUSION - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

THE LAW TODAY: Nautilus, Inc. v. Biosig Instruments , 134 S. Ct. 2120 (2014) A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention.

 MPEP – 2173.05(b) Relative Terminology  The use of relative terminology in claim language, including terms of degree, does not automatically render the claim indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc. , 731 F .2d 818, 221 USPQ 568 (Fed. Cir. 1984) . Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification. (“substantially equal to”)

 I.TERMS OF DEGREE  MPEP: “Terms of degree are not necessarily indefinite. Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. Interval Licensing LLC v. AOL, Inc. , 766 F .3d 1364, 1370, 112 USPQ2d 1188, 1192-93 (Fed. Cir. 2014) (citing Eibel Process Co. v. Minnesota & Ontario Paper Co ., 261 U.S. 45, 65-66 (1923) (finding ‘substantial pitch’ sufficiently definite because one skilled in the art ‘had no difficulty … in determining what was the substantial pitch needed’ to practice the invention)).

BUT the next sentence of the MPEP says : “Thus , when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree .” Hearing Components, Inc. v. Shure Inc. , 600 F .3d 1357, 1367, 94 USPQ2d 1385, 1391 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp. , 599 F .3d 1325, 1332, 94 USPQ2d 1321, 1326 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc. , 731 F .2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984).

THEN, the MPEP says: “If the specification does not provide some standard for measuring that degree, [then] a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). ” Isn’t this backwards? It seems the Examiner should be searching for a standard in the art, THEN, consult the specification if there is no standard available in the art. Perhaps the Examiner could initiate an interview. Interval Licensing LLC v. AOL, Inc. (2014): “ Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention .”

“Subjective terms” may be indefinite: The Court in Interval Licensing held the claim phrase “unobtrusive manner” indefinite because the specification did not “provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary.”

“ For example, in Ex parte Oetiker , 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992), the phrases “relatively shallow,” “of the order of,” “the order of about 5mm,” and “substantial portion” were held to be indefinite because the specification lacked some standard for measuring the degrees intended.

Use of Examples and Teachings in the Spec “The claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). See, e.g., Interval Licensing LLC v. AOL, Inc. , 766 F .3d 1364, 1371-72, 112 USPQ2d 1188, 1193 (Fed. Cir. 2014) (observing that although there is no absolute or mathematical precision required, “[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art” ).

Interval tried to rely on a sentence in the Summary of the Invention which provided that information can be presented “in an unobtrusive manner that does not distract the user from the primary interaction with the apparatus (e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus). Although the court recognized that examples in the specification may be used to support a claim term’s definiteness, it declined to do so when faced with “a single ‘e.g.’ phrase from a lengthy written description.

When discussing the “e.g.” argument, the court noted that “had the ‘ e.g. ’ phrase been cast as a definition instead of as an example —if the phrase had been preceded by ‘i.e.’ instead of ‘e.g.’— then it would help provide the clarity that the specification lacks. ” Explicitly citing Nautilus for the proposition that “‘post hoc’ efforts to ‘ascribe some meaning to a patent’s claims’” are disfavored, the Federal Circuit panel noted that “with this lone example, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non- distracting.”

Use of Declarations Under 37 CFR 1.132 During prosecution, an applicant may also overcome an indefiniteness rejection by providing evidence that the meaning of the term of degree can be ascertained by one of ordinary skill in the art when reading the disclosure. For example, in Enzo Biochem, the applicant submitted a declaration under 37 CFR 1.132 showing examples that met the claim limitation and examples that did not. Enzo Biochem, 599 F .3d at 1335, 94 USPQ2d at 1328 (noting that applicant overcame an indefiniteness rejection over “not interfering substantially ” claim language by submitting a declaration.

Terms that may require more work by inventors and Practitioners: “About” “Essentially” “Similar” “Substantially” “Type” (for example, “inorganic - type catalyst”)

Use of Previously Issued Patents to Argue That the Skilled Artisan Would Understand the Term For example: “ substantially transparent ” polymeric sheet. An examiner rejected this claim term as indefinite; a definition was not provided in the specification as filed. However, a search was made of this phrase in the claims of US patents, and it was found to have been used in over 9000 granted US patents in at least one independent claim. Some of the patents were in the same field or closely related fields.

QUERY: Could a drawing showing a plastic sheet as at least partially transparent (for example, writing could be seen beneath the sheet) support the phrase “substantially transparent? What if there was no drawing showing this?

The asserted claims require, among other things, two electrodes to be “in a spaced  relationship with each other” such that the system is able to detect and remove spurious electromyogram (“EMG”) signals from the electrocardiograph (“ECG”) signals (otherwise known as the heart rate). Figure 1 of the patent shows the claimed apparatus, where metal strips 9 and 11 around the tube are an example of the electrodes “in a spaced relationship”:

Claim drafting possible solution: “two electrodes are configured such that the system is able to detect and remove spurious electromyogram (“EMG”) signals from the electrocardiograph (“ECG”) signals (otherwise known as the heart rate)