United States: The CCPA's Lasting Impact On U.S. Patent Law - An Examination Of CCPA Definiteness Decisions

I. Introduction

In United States patent law, in addition to satisfying the requirements for subject-matter eligibility, novelty, enablement, nonobviousness, and written description, a patent must comply with the definiteness requirement as specified in 35 U.S.C. §112(b).¹ This means that the patent claims must particularly point out and distinctly claim the subject matter the inventor or joint inventor regards as the invention. The test of definiteness is whether a person having ordinary skill in the art would understand what is claimed when the patent claims are read in light of the specification.² This provides the public with notice as to what subject matter is protected by the patent. The Supreme Court has described this standard as "reasonable certainty."³

While modern case law continues to expand our understanding of what is required for definiteness, it is important to consider United States Court of Customs and Patent Appeals ("CCPA") cases, and how these decisions shaped and continue to influence current patent law jurisprudence. Between 1963 and 1982, the CCPA issued multiple decisions concerning 35 U.S.C. §112(b). The vast majority of these decision have not been overruled by the CCPA or overturned by an en banc Court of Appeals for the Federal Circuit ("CAFC") and thus remain binding precedent.⁴ Notably, many CCPA cases involved appeals from ex parte prosecution and are still found throughout the MPEP and, therefore, may be especially useful in responding to examiner rejections. This article summarizes CCPA definiteness decisions that, remaining binding precedent, should be considered to enhance the chances that your patents comply with the definiteness requirement.

II. Case Summaries

A. In re Wakefield, 422 F.2d 897 (C.C.P.A. 1970)

In In re Wakefield the CCPA held that the Patent Office Board of Appeals ("the Board") erred in affirming a multiplicity rejection and in its assessment of the applicant's compliance with 35 U.S.C. §112(b).

The application disclosed a method of making a synthetic polyisoprene using a catalyst. Claim 1 is illustrative of the claims on appeal:

1. A synthetic homopolymer [ of] isoprene combining the desirable properties of both Hevea and sulfur vulcanizable synthetic rubbers characterized by at least 80% cis-1, 4, structure, not in excess of 10% trans-I, 4 structure, not in excess of 10% 3, 4 structure, and essentially no 1, 2 structure, said homopolymer being free from the proteins, soaps, resins and sugars present in natural Hevea rubber.

The examiner rejected all of the claims for undue multiplicity under 35 U.S.C. § 112 and, inter alia, for failing to define the invention. The Board affirmed all of the examiner's rejections, agreeing that if the polyisoprene is adequately defined in each claim, then the claims reciting the inherent properties of the polymer are unnecessary and confusing. Id. at 900.

The CCPA disagreed with the Board and explained that "an applicant should be allowed to determine the necessary number and scope of his claims, provided he complies with other statutory requirements and pays the applicable fees." Id. With respect to the Board's decision that the number of claims was so large as to obscure the invention and ultimately fail to comply with 112(b), the CCPA disagreed, stating that each of the claims was relatively brief and clear in its meaning. Id. The CCPA also stated that though examining 40 claims was tedious work, it was no reason to support the notion that the invention was obscured by the large number of claims. Id.

The CCPA also held that the Board erred in affirming the examiner's definiteness rejection under 112(b). The first basis the Board set forth for its decision was that the use of a negative limitation excluding the characteristics of the prior art products causes the claims to read on a virtually unlimited number of materials, many of which "might be the full equivalents in their effects of those excluded." Id. at 904. The CCPA explained that breadth is not necessarily indefiniteness; the scope of the claim was still definite because each recited claim limitation was definite. Id. The Board's second basis was that the claims "[read] better upon the natural product from which the named substances have been removed than upon that prepared by the disclosed method of this application, which obviously never had these substances present to contend with in the first place." Id. The CCPA disagreed with the Board for the same reasons as the first basis and also because the applicant excluded any purified natural product from the scope of their claims by using the word "synthetic." The CCPA explained that "synthetic" has a reasonably precise meaning and does not render the claims indefinite. Id. The word alone did not make the claimed composition new, but it does not provide a basis for rejecting the claims under 112(b), as used here. Id.

B. In re Hammack, 427 F.2d 1378 (C.C.P.A. 1970)

In In re Hammack, the CCPA affirmed the Board's decision to uphold the examiner's indefiniteness rejection. The application on appeal related to determining the position and velocity of moving bodies, such as aircraft, space vehicles, ballistic missiles, and submarines. Sample claim 43 read:

A method of determining the otherwise unknown and unbounded position of each of a number of well separated points in space comprising the steps of determining differences between geometric parameters of configurations associated with said points of unknown position, each of said configurations including only a single one of said points of unknown position and a plurality of points whose positions are known, each of said differences being determined between two selected configurations each configuration of said two selected [configurations] comprising the same number of known points as comprised by the other of said two selected configurations, and determining in orthogonal coordinates the position of each of said points of otherwise unknown and unbounded position using the said determined differences and the coordinates of the points of known position.

The examiner rejected all of the appealed claims as indefinite under 35 U.S.C. §112(b) because the claims did not define the invention with a reasonable degree of particularity. The examiner argued that a person of ordinary skill in the art should not have to make a searching analysis of the entire description and drawing to guess at the structure covered by the claims. Id. at 1381. He stated that the claims must have some distinct meaning on their face. Id.

The Board affirmed the rejection, stating that it is the claims that must point out what the invention actually claims, not a voluminous amount of arguments that cannot be included in the patent. Id. at 1381. The claims of the patent at issue served merely as a "shadowy framework" which had words so devoid in precise language and references in the specification, that elaborate arguments outside both the specification and the claims were needed to define the claims. Id. Claims such as those could not satisfy the requirements of 112(b). Id.

The appellant argued that the claims did not need to be more specific than necessary to distinguish over the prior art. Id. The appellant was wrong, as that argument "read out of the statute the requirement in the second paragraph of section 112 for claims to 'particularly point out and distinctly claiming the subject matter which the applicant regards as his invention.'" Id. at 1382. Every requirement of the statute must be met for a patent to be granted. Id.

The CCPA agreed with the Board that the claims at issue did not set out with sufficient particularity what subject matter the applicant is trying to protect. Id. at 1383. For example, in claim 43, nothing discloses "how the 'configurations' are 'associated' with the 'points' nor make it clear how the determinations so recited are operatively related to each other or to the other steps of the claim so as to define a method which performs the function of determining the 'position of each of a number of well separated points in space,' as attributed to the method in the preamble. Consideration of claim 43 in light of the disclosure but without reading into it unrecited limitations from the specification, leaves it far from clear what the above quoted expression means or what the claim encompasses." Id. at 1382.

C. In re Moore, 439 F.2d 1232 (C.C.P.A. 1971)

The CCPA reversed the Board's decision to affirm the examiner's rejections on all claims in In re Moore. The invention involved products obtained when hydrocarbon compounds similar in nature to alkyladamantane are fluorinated. The examiner rejected all claims under 112(b) as being indefinite, when viewed as product-by-process claims. The Board found no reversible error in the examiner's rejection and reasoned that the claims were incomplete and that the product-by-process claims were indefinite in the language "highly fluorinated alkyladamantanes." (from claims 1-2) and "highly fluorinated" (from claims 3-7). Id. at 1234. The Board reasoned that omitting process parameters required to yield the desired fluorinated alkyladamantanes from the claims renders the claims indefinite. Id. The Board further contended that it was well-known in the art that fluorination reactions broadly would yield not only the desired fluorinated alkyladamantanes but also undesired fluorinated degradation products. Id. at 1234-1235. The Board further stated that although claims 3-7 each seemed to be directed to a single compound, as written they covered any one or a mixture of more than one compound⁵ and that appropriate, definite generic claim language should have been used if generic coverage was intended. Id. at 1235.

The CCPA stated that "the definiteness of the language employed must be analyzed--not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." Id. The CCPA reasoned that the Board's decision could not stand since a person of ordinary skill in the art, having appellant's disclosures and claims before him, would possess a reasonable degree of certainty as to the exact subject matter encompassed within the claims. Id. at 1236. Process parameters were not important and appellant clearly disclosed that the invention does not depend on the type of fluorination process, but rather on the fact that the products are fluorinated and fluorinated to a specified minimum degree, as defined in all the claims. Id. The appellant submitted an expert opinion by affidavit that successfully rebutted the Board's interpretation of the claims, and the CCPA held that the opinion was conclusive. Id. It found that the claims were not product-by-process claims, and even if they were, that would be irrelevant to the issue of what the claims define and whether they are definite. Id. This was because it was clear that the appellants did not wish to claim the degraded products, but only the highly fluorinated alkyl adamantanes, which were the non-degraded products. Id. According to the CCPA, quoting In re Steinbauer, 410 F.2d 411 (C.C.P.A. 1969), "What results from these procedures is not pure compounds but mixtures of compounds. That is what appellants want, it is what they get, and it is what they claim." In this case, that was "the recited alkyl adamantanes . fluorinated by known processes to a degree short of complete substitution of all hydrogen atoms, [resulting in] mixtures of compounds randomly fluorinated to the specified degree." Id. at 1237. The CCPA found that the claims were definite and reversed the Board's decision upholding the 112(b) rejection. Id.

D. In re Swinehart, 439 F.2d 210 (C.C.P.A. 1971)

The invention in In re Swinehart was a composition of matter made up of barium fluoride and calcium fluoride in approximately eutectic proportions. The examiner rejected claim 24 for failing to point out and distinctly claim the invention, as required by 35 U.S.C. §112. Claim 24 read as follows:

24. A new composition of matter, transparent to infrared rays and resistant to thermal shock, the same being a solidified melt to two components present in proportion to approximately eutectic, one of said components being BaF₂and the other being CaF_2.

Id. at 211.

The Board agreed with the examiner, noting that the claim "distinguishes over the unsatisfactory material of appellants' figure 3 merely in the functional term 'transparent to infrared rays.'" Id. at 211. The Board explained that transparency could not be treated as an inherent characteristic property in view of the fact that the composition of appellants' Example V (figure 3) lacked this property, "yet is made of the same materials as appellants' Example I." The Board further explained that this claim was not the type covered by a proper functional limitation under §112 because the language in question did not define a means, step, or distinguishing ingredient. Id. at 212.

The appellants argued that the disputed language did not necessarily refer to a function of the recited composition or to a desired result, but rather defined a physical property. Id. The CCPA stated that whether the disputed language is functional is not determinative of whether claim 24 satisfies the 112(b) requirements and is irrelevant in the definiteness analysis. Id. The CCPA reasoned that characterizing something as "functional" indicated nothing more than the fact that an attempt was being made to define something by what it does rather than what it is. "[T]here is nothing intrinsically wrong with using that technique while drafting patent claims," according to the CCPA. Id.

On appeal, the solicitor argued that the language used in claim 24 was not definite because "one would not know whether a product is 'transparent to infrared rays,' and therefore would infringe the claims, if the product transmits less infrared than is shown in Figure 2." Id. at 214. The CCPA disagreed and held that the claim was not rendered indefinite by the quoted language. Id. The prior art compositions were substantially opaque to infrared rays and the appellants produced a composition that was substantially transparent to those rays, which made the claimed composition novel. Id. The figures disclosed in appellant's specification indicated that the degree of transparency varied depending on certain factors, but in every case a substantial amount of infrared radiation was transmitted. Id. The CCPA held that "when appellants' claim is read in light of that disclosure the limits it purports to define are made sufficiently clear" and reversed the Board decision. Id.

E. In re Miller, 441 F.2d 689 (C.C.P.A. 1971)

In In re Miller, the CCPA reversed the Board's decision to affirm the examiner's indefiniteness rejection of claims 1,2, and 4-18 reciting ultrafine particles of polytetrafluroethelyene (PTFE) and a method for making them. Id. at 690. The examiner rejected all claims as being indefinite under 112(b) and argued that a claimed product must be defined in terms of its own properties. Id. at 691. The examiner stated that the appellant's description of unsintered flex strength, a property of the claimed invention, was not indicative of the claimed invention but instead the powder for which the invention would be used. Id. Appellant argued that the powder's capability of being compacted into a preform having at least the "unsintered flex strength" of the preforms is a property of the powder which may be used to define the powder. Id. at 692.

The CCPA cited to In re Moore and explained that what the claims define is what the applicant regards as the invention. Id.; In re Moore, 439 F.2d 1231, 1235 (C.C.P.A. 1971). The CCPA reasoned that if skilled artisans can determine whether any particular PTFE powder is within the scope of the claim, then the claim fulfils its purpose as a definition. Id. Here, just as in Swinehart, the CCPA refused to deny a claim solely because of the type of language used to define the subject matter of the patent application. Id. at 692-93.

For the claims at issue, the CCPA determined that a skilled artisan would be able to determine what subject matter was within the scope of the claims with certainty. Id. at 693. It was not a fatal defect that the claim language was directed to certain properties that could be measured only after the PTFE powder had been compacted into a preform. Id. The CCPA also found that the omission of the temperature at which the process was to occur was not fatal. Id. Appellant argued that it was well known in the art that if no temperature was listed, then room temperature was to be used. The CCPA held that here, omitting the temperature requirement made the claims broader than they otherwise would be, but that breadth was not to be equated with indefiniteness. Id.

III. Conclusion

The cases discussed are examples of CCPA precedents regarding definiteness in United States patent law. It is important to remember that CCPA cases provided a foundation, and they continue to provide useful analyses and arguments to use in modern U.S. patent law practice. The cases discussed above establish fundamental definiteness principals such as "breadth is not to be equated with indefiniteness" and "functional language is not inherently indefinite." The CCPA may be gone-but the Court and its decisions should not be forgotten.

Footnotes

1 Pre-AIA it was 35 U.S.C. §112(2) but the text remains the same. Hereafter, we shall refer to the CCPA's rulings on 112(2) as rulings on 112(b).

2 See Manual of Patent Examining Procedure ("MPEP") 2173.02

3 Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. ____, 110 USPQ2d 1688, 1689 (2014).

4 See South Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982).

5 Claim 3. As a composition of matter, highly fluorinated 1-ethyladamantane containing at least 15 fluorine atoms per molecule.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.