DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 21 April 2026 have been fully considered but they are persuasive only in part.
First, the amendment to claim 33 overcomes the objection to claim 33 and the indefiniteness in its preamble/transitional phrase(s).
Second, applicant’s arguments regarding the rejection under 35 U.S.C. 112(a) are not convincing.
In this respect, applicant asserts first:
Applicants first note that in making this rejection the Office Action appears to require that all the pending claims recite that the pitch rate command is compared as part of a sum with the with the scaled pitch angle and scaled pitch rate. Applicants submit that this is an incorrect reading of the Written Description requirement under 35 U.S.C. §112(a). Applicants submit that there is no requirement that all claims recite the summation when the application as filed supports claims that do not include the summation.
The standard applied by the examiner is provided in the MPEP 2163.02 and 2161.01, I. and in LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) cited therein, where the court held:
"Whether the flaw in the specification is regarded as a failure to demonstrate that the applicant possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a)]").
Next, to provide support for the claims, applicant argues:
Applicants note that the Parent Application (serial number 16/736,036, filed January 7, 2020) included claims that did not require the comparison to the sum with the scaled pitch angle and scaled pitch rate. For example, independent claim 9 as filed in the Parent Application 16/736,036 includes the limitations of (emphasis added):
[receiving an aircraft speed from an aircraft speed sensor;]1
determining a pitch angle saturation limit in response to the aircraft speed and flight path angle;
receiving a pitch rate command from an aircraft control system;
generating a pitch regulator in response to the pitch rate command exceeding the pitch angle saturation limit; [and
and coupling the pitch regulator to an aircraft control surface.]
Notably, in this originally filed claim 9 the pitch regulator is generated “in response to the pitch rate command exceeding the pitch angle saturation limit”. Notably, this step does not recite that the pitch rate command be summed with the scaled pitch angle and scaled pitch rate before determining if the pitch rate command exceeds the pitch angle saturation limit. Compare this language to originally filed claim 15 of the Parent Application, which does recite the summation of the pitch rate command, scaled pitch angle and scaled pitch rate.
This argument is not persuasive as the original claim 9 in 16/736,036 was rejected under both 35 U.S.C. 112(a), enablement, and 35 U.S.C. 112(a), description requirement in (e.g., paragraphs 18 to 21, 24, 27 to 29, 31, and 34 of) the Non-Final Rejection dated 21 August 2021, and similarly in the Final Rejection date 7 Match 2022, the Non-Final Rejection of 11 July 2022, and the Final Rejection of 7 November 2022, and for being indefinite under 35 U.S.C 112(b), before being canceled by applicant on 27 April 2023. It seems to the examiner that, logically, a claim which was apparently (e.g., in the examiner’s opinion) not enabled or supported descriptively under 35 U.S.C. 112(a) (or definite under 35 U.S.C 112(b)) in its own application, as the examiner believes claim 9 in 16/736,036 was not, cannot provide support for another claim (e.g., applicant’s current claims), or aid in another claim’s interpretation, in another (child) application.
The examiner understands that, per MPEP 2163, I., A., there is “a presumption that an adequate written description of the claimed invention is present when the application is filed. In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976) ("[W]e are of the opinion that the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").”
However, as further indicated in MPEP 2163, I., A., “as discussed in subsection I, supra, issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the inventor had possession of the claimed invention at the time of filing. . . . An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function.”
In this respect, see e.g., MPEP 2161.01, I., which indicates, “[O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.”
See also MPEP 2163.03, V. which indicates, “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).”
For example, claim 9 in 16/736,036 includes the “generating a pitch regulator” step which is described solely in terms of its function, but what a “pitch regulator” was and the manner in which a pitch rate command (obviously characterized in deg/s) might have been said to “exceed” a pitch angle saturation limit (obviously characterized in deg) is/was apparently not sufficiently supported in the specification, and nothing in claim 9 in 16/736,036 regulated the currently claimed control signal during takeoff to limit the aircraft pitch attitude of the aircraft in response to the comparing of the pitch rate command to the pitch angle saturation limit.
Accordingly, applicant’s arguments are not persuasive in this respect.
Third, regarding the rejections under 35 U.S.C. 112(b), applicant’s amendments resolve some issues but fail to address others, e.g., “the flight path angle of the aircraft” in the independent claims still lacks antecedent basis, “generate [a] control signal based at least in part from the pitch rate command for coupling to [an] aircraft control surface” is still unclear (and grammatically incorrect[2]), with the examiner understanding that the “stall” (or critical) “angle of attack of the aircraft”, the “free-air stall angle of attack”, and the ground effect stall angle of attack” are definite, in the claim context(s).
In this respect, applicant argues:
Specifically, one skilled in the art would recognize that “rate” in this context simply quantifies an amount of pitch change over a time interval, and thus “pitch rate command” provide a measure of commanded change in aircraft pitch over such a time interval that can compared to the pitch angle saturation limit. Stated another way, one skilled in the art would understand that the integral effect of the “pitch rate command” on aircraft pitch angle over a time interval to provide a determination of aircraft pitch attitude if the pitch rate command were to be executed over that time interval. Note that paragraph 0022 of applicants’ specification specifically describes how such system can “track the pitch rate command with the proportional and integral feedbacks of aircraft pitch rate”.3
Since the “time interval” that applicant refers to is not specified either in the specification or claims (e.g., the specification only refers to a 0.3 sec time constant of a low-pass filter), and thus could (in line with applicant’s reasoning) be any time interval whatsoever without metes or bounds, this would therefore cause the “pitch rate command” to possibly assume ANY magnitude or value when it (e.g., in deg/s) was multiplied by the boundless time interval(s), thereby apparently rendering any comparison with the pitch angle saturation limit to possibly be meaningless. Accordingly, this argument is not convincing.
Applicant next brings claim 9 of the Parent Application into the indefiniteness argument, which the examiner has addressed above.
Regarding claims 22 to 24 and 34 to 36, applicant asserts:
Applicants respectfully disagree and submit that this rejection like those above appears to be rely upon an unreasonable narrow reading of “comparing”. Again, applicants submit that there is nothing inherently contradictory about comparing one factor to the pitch angle saturation limit or comparing a combination (e.g., sum) of factors to such a limit. In each case the system can determine the results of a comparison and use those results to limit the aircraft pitch attitude as recited in the various claims. As such, applicants again submit that the claims are properly definite in this regard, and that this rejection under 35 U.S.C. 112(b), second paragraph has been overcome.
The examiner understands, but disagrees with applicant’s assertion, and maintains his position, supported by the mathematical/logical arguments already made.
Fourth, in view of the amendment to claim 21 that apparently regulates the control signal during takeoff to limit the aircraft pitch angle of the aircraft, which the examiner interprets as a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c) that integrates any abstract idea into a practical application, the withdraws the rejection under 35 U.S.C. 101.
Lastly, the terminal disclaimer overcomes the nonstatutory double patenting rejection, which is withdrawn.
Accordingly, applicant’s arguments are only persuasive in part.
Note on Claim Amendment Form
Here, the examiner merely notes that applicant has changed most, but not all, recitations of “during takeoff” in the claim set to, “during takeoff of the aircraft”, while leaving certain occurrences of the phrase unchanged (see apparent occurrences of unchanged “during takeoff” in claims 22 to 26). While a reason for this selective amending is not known by the examiner, no indefiniteness is apparently introduced in dependent claims 22 to 26 by the selective amending, since independent claim 21 as well as other portions of those claims make it clear that “during takeoff” is the “during takeoff of the aircraft”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(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 following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21 to 40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 21 and 33, applicant has apparently not previously described, in sufficient detail, by what algorithm(s)4, or by what steps or procedure5, he compared the pitch rate command alone (e.g., apart from being in a sum with the scaled pitch angle and the scaled pitch rate) during takeoff to the pitch angle saturation limit during takeoff of the aircraft, as the claim(s) now cover(s) and encompass(es). Accordingly, the examiner believes that the specification as filed does not evidence possession of the full scope of the now claimed invention, and the claims now only describe a desired result.
In this respect, the specification does not describe the now claimed comparing, but rather describes other instances of comparing including either comparing the pitch angle saturation limit i) to a pitch angle command (alone) or ii) to a sum of the pitch rate command, the scaled pitch rate, and the scaled pitch angle. There is apparently no indication in the specification that the pitch rate command (alone or apart from the sum, as the claims now cover and encompass) might be compared to the pitch angle saturation limit during takeoff of the aircraft, nor is it even clear how a “rate command” (e.g., in degrees per second) might possibly be compared to an “angle [] limit” (e.g., in degrees) in as much as they would be dimensionally different, and furthermore (for the instance ii) above) there is apparently no suggestion that scaled pitch rate and the scaled pitch angle might BOTH be zero (e.g., “during takeoff of the aircraft”, as claimed) in the described comparing with the sum. For example, the specification describes at published paragraph [0006] a processor configured “to compare the pitch angle command to the pitch angle saturation limit”, and the specification describes at published paragraphs [0008] and [0039] a processor configured “to compare the sum of the pitch rate command, scaled pitch rate, and scaled pitch angle to the pitch angle saturation limit”, but it is apparently undescribed that the pitch rate command alone (as opposed to the pitch angle command alone, as described at published paragraph [0006]) would have been compared (e.g., apart from the sum which the claim(s) now clearly cover(s) and encompass(es)) with the pitch angle saturation limit during takeoff. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of full scope6 of the now claimed invention, but has only now (if anything) described a desired result.
Regarding claims 21 and 33, applicant has apparently not previously described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he regulated the control signal during takeoff to limit the aircraft pitch attitude of the aircraft in response to the comparing of the pitch rate command (e.g., alone) to the pitch angle saturation limit. No comparing of the pitch rate command alone (i.e., apart from the disclosed “sum”, which the claim now clearly covers) to the pitch angle saturation limit is apparently described in the specification, in sufficient detail, and no algorithm(s) or steps/procedure for “regulat[ing]” the control signal to limit the aircraft pitch attitude in response to such a comparing is apparently described in the specification, in sufficient detail. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of full scope of the now claimed invention, but has only now (if anything) described a desired result.
Regarding claims 22 to 24 and 34 to 36, applicant has not previously described that a comparing of the pitch rate command to the pitch angle saturation limit (as recited in the independent claims, which also was not originally described) was performed by i) comparing the pitch angle saturation limit to a sum of the pitch rate command and a scaled pitch angle during takeoff of the aircraft, ii) comparing the pitch angle saturation limit to a sum of the pitch rate command and a scaled pitch rate during takeoff of the aircraft, or iii) by comparing the pitch angle saturation limit to a sum of the pitch rate command, a scaled pitch angle, and a scaled pitch rate during takeoff of the aircraft, with only comparing the pitch angle saturation limit to either a pitch angle command or a sum of the pitch rate command, a scaled pitch angle, and a scaled pitch rate during takeoff apparently being described in and supported by the specification. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of full scope of the now claimed invention, but has only now (if anything) described a desired result.
Claims 21 to 40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 21, lines 7ff and in claim 33, lines 8ff, “generate [a] control signal based at least in part from the pitch rate command for coupling to [an] aircraft control surface” is grammatically incorrect, unsupported by the specification, and unclear in the claim context which does not clarify with reasonable certainty7 what might be intended by “for coupling to an aircraft control surface” (e.g., is this a recitation of mere intended use, is this a recitation requiring a physical connection/coupling between the control signal and the control surface as a literal reading of the claim would imply, is this a recitation requiring a coupling of control function of control signal to the control surface by some non-descript control actuator or element, is this a recitation that is limiting the purpose/function of the control signal or is this a recitation limiting the purpose/function of the pitch rate command as either construction is permitted by the grammar8, etc.?)
In claim 21, lines 11ff, and in claim 33, lines 10ff, “calculate a pitch angle saturation limit based at least in part on a stall angle of attack and the flight path angle of the aircraft during takeoff of the aircraft” is indefinite in the claim context, with “the flight path angle during takeoff” having insufficient antecedent basis and being unclear (e.g., is this a desired flight path angle, an actual flight path angle, a commanded/regulated flight path angle, a flight path angle correction, something else entirely, etc.?) See e.g., MPEP 2173.05(e).
In claim 21, lines 13ff, and in claim 33, lines 13ff, “compare the pitch rate command to the pitch angle saturation limit during takeoff of the aircraft” is indefinite and unclear from the teachings of the specification (e.g., how can a pitch rate, e.g., ostensibly in degrees per second, be compared to a pitch angle, e.g., ostensibly in degrees, since the two quantities are/would be dimensionally different?), and apparently unsupported by the specification (which apparently does not describe, in sufficient detail , that a pitch rate command alone, as the only reasonable reading of the breadth of the currently independent claims, is compared to the pitch angle saturation limit).
In claim 21, lines 15ff, and in claim 33, lines 15ff, “regulate the control signal during takeoff to limit the aircraft pitch attitude of the aircraft in response to the comparing of the pitch rate command to the pitch angle saturation limit” is indefinite from the teachings of the specification that apparently describes no such comparing of (e.g., only) the pitch rate command to the pitch angle saturation limit, nor does it clarify how the control signal might be “regulate[d] in response to the comparing”, leaving the metes and bounds of the claim unclear.
Claims 22 to 24 and 34 to 36, which are not original claims, are indefinite for being internally contradictory, and for contradicting the plain meaning of the independent claims, as if to influence or clarify a purported plain meaning of the (e.g., perhaps unclear) independent claims by attempting to add a new special definition9 of the otherwise plain meaning to be more in line with what is described in the specification. For example, claim 22 contradicts itself by first indicating/reiterating that the pitch rate command [e.g., A in the examiner’s notations below] is compared to the pitch angle saturation limit [e.g., B], this comparing being denoted A<=>B by the examiner, and then further specifies that the comparison is accomplished by “comparing the pitch angle saturation limit [e.g., B] to a sum of the pitch rate command [e.g., A] and a scaled pitch angle [e.g., C] during takeoff”, this comparing being denoted by the examiner as B<=>{A+C}. However, A<=>B is not the same as, and cannot be (i.e., when C is non-zero that the claim necessarily/clearly permits) represented by B<=>{A+C}. Therefore the claim is unclear. Moreover, the specification does not apparently support any A<=>B or B<=>A comparisons, where A is the pitch rate command, as detailed above. Analogous reasonings may be applied to the other claims 23, 24, and 34 to 36.
In claim 30, lines 2ff, and in claim 31, lines 2ff, “stop generating the control signal from the damped pitch rate command” is indefinite in the claim context (e.g., that never apparently starts generating the control signal from a damped pitch rate command) and from the teachings of the specification that neither refers to nor clarifies any such “stop[ping]” of generating of the control signal, with “the damped pitch rate command” also having insufficient antecedent basis and being unclear in the claim context.
Claim(s) depending from claims expressly noted above are also rejected under 35 U.S.C. 112 by/for reason of their dependency from a noted claim that is rejected under 35 U.S.C. 112, for the reasons given.
Terminal Disclaimer
The terminal disclaimer filed on 21 April 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,841,713 to Shin et al. has been reviewed and is accepted. The terminal disclaimer has been recorded.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David A Testardi whose telephone number is (571)270-3528. The examiner can normally be reached Monday, Tuesday, Thursday, 8:30am - 5:30pm E.T., and Friday, 8:30 am - 12:30 pm E.T.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachid Bendidi can be reached at (571) 272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID A TESTARDI/Primary Examiner, Art Unit 3664
1 The examiner adds the initial and final limitations of the claim to provide context for the 35 U.S.C. 112 issues of claim 9.
2 Particularly how is a control signal or a command (which one, in the claim?) “coupled to” a “surface”, from the teachings of the specification?
3 It seems like applicant may (?) be suggesting that the claim(s) cover(s) comparing i) a commanded change (Δ) in aircraft pitch with the pitch angle saturation limit, or “stated another way”, ii) the pitch attitude of the aircraft with the pitch angle saturation limit. The examiner would repudiate both of these suggestions, as going against the plain meaning of the claims, and e.g., reading out the recited “rate” from the claim. The examiner understands that the claim(s) cover(s), “compar[ing] the pitch rate command to the pitch angle saturation limit during takeoff of the aircraft”, not e.g., comparing a commanded change in aircraft pitch or the pitch attitude of the aircraft to the pitch angle saturation limit, which would likely not be patentable over the prior art, with conventional aircraft systems normally preventing the aircraft pitch attitude from exceeding the critical angle of attack (critical AoA), e.g., using stick shakers, etc. For example, published paragraph [0006] of applicant’s specification describes a flight control system in which a processor is operable to “to compare the pitch angle command to the pitch angle saturation limit”, but this is apparently NOT what is claimed in any pending claim.
4 See the 2019 35 U.S.C. 112 Compliance Federal Register Notice (Federal Register, Vol. 84, No. 4, Monday, January 7, 2019, pages 57 to 63). See also http://ptoweb.uspto.gov/patents/exTrain/documents/2019-112-guidance-initiative.pptx . Quoting the FR Notice at pages 61 and 62, "The Federal Circuit emphasized that ‘‘[t]he written description requirement is not met if the specification merely describes a ‘desired result.’ ’’ Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). . . . When examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as 'a finite sequence of steps for solving a logical or mathematical problem or performing a task.' Microsoft Computer Dictionary (5th ed., 2002). Applicant may 'express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.' Finisar, 523 F.3d at 1340 (internal citation omitted). It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682–83. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. 112(a) for lack of written description must be made. See MPEP § 2161.01, subsection I."
5 See http://www.uspto.gov/sites/default/files/documents/fnctnllnggcmptr.pptx at page 29.
6 See MPEP 2161.01, I. and LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) cited therein ("Whether the flaw in the specification is regarded as a failure to demonstrate that the applicant possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a)]").
7 See Nautilus, Inc. v. Biosig Instruments, Inc. (U.S. Supreme Court, 2014) which held, "A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." See also In re Packard, 751 F.3d 1307 (Fed.Cir.2014)(“[A] claim is indefinite when it contains words or phrases whose meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.”) and Ex Parte McAward, Appeal No. 2015-006416 (PTAB, Aug. 25, 2017, Precedential) (“Applying the broadest reasonable interpretation of a claim, then, the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.”)
8 See MPEP 2173.02, I., “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate.”
9 See MPEP 2173.01, I.: "An applicant may not add a special definition or disavowal after the filing date of the application. However, an applicant may point out or explain in remarks where the specification as filed contains a special definition or disavowal."
Prosecution Insights