Monday, December 08, 2008

BPAI's Miyazaki: two or more plausible constructions, out under 112

Patently-O discusses the Nov. 2008 BPAI decision in Miyazaki . Important text in the decision is:

This rule of reading claims narrowly in view of ambiguity runs
counter to the USPTO’s broader standard for claim construction during
prosecution. In particular, unlike in post-issuance claim construction, the
USPTO gives pending claims “their broadest reasonable interpretation
consistent with the specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This broader claim
construction standard is justified because, during prosecution, the applicant
has the opportunity to amend the claims, and the Federal Circuit has held
that an applicant has the opportunity and the obligation to define his or her
invention precisely during proceedings before the USPTO. See In re Morris,
127 F.3d 1048, 1056-57 (Fed. Cir. 1997) (35 U.S.C. 112, second paragraph,
places the burden of precise claim drafting on the applicant); In re Zletz, 893
F.2d 319, 322 (Fed. Cir. 1989) (manner of claim interpretation that is used
by courts in litigation is not the manner of claim interpretation that is
applicable during prosecution of a pending application before the USPTO).

The punchline: As such, 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.


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