  United States Court of Appeals
      for the Federal Circuit
                ______________________

            IN RE THOMAS G. PACKARD
                ______________________

                      2013-1204
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Serial No.
12/004,324.
                 ______________________

                 Decided: May 6, 2014
                ______________________

    LOUIS W. TOMPROS, Wilmer Cutler Pickering Hale and
Dorr, LLP, of Boston, Massachusetts, argued for appel-
lant. With him on the brief were PROSHANTO MUKHERJI
and CAITLIN R. LOOBY.

    NATHAN K. KELLEY, Deputy General Counsel for Intel-
lectual Property Law and Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, argued for
appellee. With him on the brief were KRISTI L. R. SAWERT
and STACY B. MARGOLIES, Associate Solicitors. Of counsel
was WILLIAM LAMARCA, Attorney, United States Patent
and Trademark Office, of Alexandria, Virginia.
                 ______________________
2                                            IN RE PACKARD




Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.
    Concurring opinion filed by Circuit Judge PLAGER.
PER CURIAM.
    This case raises an important question: what stand-
ard for indefiniteness should the U.S. Patent and Trade-
mark Office (“USPTO”) apply to pre-issuance claims? The
parties point to no case in which we previously have
addressed this question.
    The Patent Trial and Appeal Board (“Board”) held Mr.
Packard’s applied-for patent claims indefinite, and there-
fore not in compliance with the statutory drafting re-
quirements of 35 U.S.C. § 112(b), which provide that the
specification conclude with “one or more claims particu-
larly pointing out and distinctly claiming” the subject
matter of the invention. 1 Mr. Packard, on appeal to this
court, insists that the Board misapplied the standard of
indefiniteness by finding his claims indefinite on grounds
that they “contain[ ] words or phrases whose meaning is
unclear.” J.A. 14. He believes that, had the Board ap-
plied an “insolubly ambiguous” standard to his claims,
those claims would not have been held indefinite.
   For the reasons we shall explain, we affirm the
Board’s rejection of Mr. Packard’s claims.




    1   The patent in this case was filed prior to the Sep-
tember 16, 2012 effective date of § 4(c) of the Leahy-Smith
America Invents Act (“AIA”), Pub. L. No. 112-29, which
replaces paragraph 2 of 35 U.S.C. § 112 with newly desig-
nated § 112(b). For the benefit of current readers, we
have adopted the current designation as the text in rele-
vant part is unchanged.
IN RE PACKARD                                             3



                       BACKGROUND
    The application in this appeal covers a coin change
holder. J.A. 24. The coin holder is a thin plastic card that
has four different channels on its front surface for storing
different types of coins, as shown in the patent figures
reproduced below. J.A. 24.




   Figure 1 shows a frontal view of the card and Figure 2
shows a cross-section of the card. J.A. 37.
    The examiner rejected Mr. Packard’s original applica-
tion on three grounds: lack of adequate written descrip-
tion, claim indefiniteness, and obviousness. J.A. 145-47.
Following this rejection, Mr. Packard cancelled all of his
original claims and substituted a new set of claims num-
bered 28 through 37. J.A. 95-99.
   Claims 28 through 37 are at issue in this appeal, of
which claims 28, 29 and 34 are representative:
4                                             IN RE PACKARD




    28. I claim a small, thin, flat plane, rectangular
    change holding card and wallet/billfold or purse
    construction with the front top side of the card
    comprising three raised, straight, parallel, double
    flanged separators and two raised, straight, paral-
    lel, double flanged side edges and a raised side
    edge end thereby forming four parallel, side by
    side, flanged coin holding channels or rows of the
    same length and of different widths, one for quar-
    ters, one for dimes, one for nickels, and one for
    pennies, that are similarly blocked at one side
    edge by the raised side end edge with the other
    side of the channel/rows open except for small,
    fixed, flexible, partially moveable, rubber or plas-
    tic retainers that are attached to the topside and
    ends of the double flanged separators such that
    coins can be retained on the card and yet slide
    freely above the surface of the card and obliquely
    overlap as necessary within the channel/rows be-
    tween the separators while the bottom, back side
    of the card is constructed with a wallet, billfold or
    purse extending from it.
    29. The change holding card wallet, billfold, purse
    of claim 28, wherein the change holding card is
    constructed as part of the wallet, billfold, or purse
    and affixed to a surface and contained within the
    wallet, billfold or purse.
    34. I claim a small thin uniformly flat plane rec-
    tangular coin holding card [c]omprising side edge
    retainers, a closed side retainer, small in-
    clined/sloped end protrusions, multiple raised
    parallel, straight and double flanged channel/row
    separators, small flexible protruding retainers on
    the top side ends of the channel/row separators,
    all of which are arranged on the upper surface of
    the card such that a various denomination of coins
    can be held and retained on the card within a re-
IN RE PACKARD                                            5



   spective channel/row and can slide freely within
   the double flanges and slightly above the flat sur-
   face of the card and can also be stored obliquely
   partially overlapping.
J.A. 95-98.
     The examiner, in his final rejection, again found the
pending claims invalid on the same three grounds: claims
28-33 and 37 for lack of written description, claims 28-37
for indefiniteness, and claims 28-37 for obviousness. J.A.
108-14. Regarding written description, the examiner
noted that, while the claims required the change holding
card to be attached to a wallet, this feature was not
supported by the written description. J.A. 109. Regard-
ing indefiniteness, the examiner pointed out that several
claim limitations failed to meet the requirements of 35
U.S.C. § 112(b) because they lacked an antecedent basis
or were otherwise unclear. J.A. 109-10.
    Mr. Packard appealed the examiner’s final rejection to
the Board, which affirmed the examiner’s written descrip-
tion and indefiniteness rejections, while reversing the
obviousness rejection. J.A. 7-19. In the course of affirm-
ing the examiner’s indefiniteness rejection, the Board
applied the review standard set forth in the Manual of
Patent Examining Procedure (“MPEP”) § 2173.05(e),
namely, “[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.” J.A. 14. On rehear-
ing, the Board declined to modify its decision. J.A. 2-5.
    Mr. Packard appeals the Board’s decision. In its re-
sponse to Mr. Packard’s opening brief on appeal, the
USPTO focused on the indefiniteness issue, noting that, if
we affirm the Board on that issue, which applies to all the
claims, the adequacy of the written description, applicable
to only some of the claims, becomes a moot issue. We
accept the USPTO’s suggestion that we address first the
claim indefiniteness issue because it relates to all of the
6                                             IN RE PACKARD




claims and it necessarily implicates the question of the
content of the written description.
    Actions of the USPTO are reviewed by us in accord-
ance with the requirements of the Administrative Proce-
dure Act. 5 U.S.C. § 701 et seq.; see Kappos v. Hyatt, 132
S. Ct. 1690, 1694 (2012) (citing Dickinson v. Zurko, 527
U.S. 150, 152 (1999)). Questions of law, as interpreted
and applied by the agency, are given plenary review on
appeal. Capon v. Eshhar, 418 F.3d 1349, 1351 (Fed. Cir.
2005). Indefiniteness, as a subset of claim construction, is
a question of law which this court reviews without defer-
ence. Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc.,
554 F.3d 1010, 1022 (Fed. Cir. 2009).
   We have jurisdiction over this appeal pursuant to 28
U.S.C. § 1295(a).
                       DISCUSSION
                             1.
    Petitioner Packard casts his appeal on broad grounds.
First, he contends that the standard applied by this court
for determining indefiniteness of a term in a claim under
35 U.S.C. § 112(b) is governed by the phrase “insolubly
ambiguous.” Under this standard, he tells us, a claim is
not indefinite if a court can give any meaning to the
disputed term in the context of the claim.
    Second, Mr. Packard contends that the “insolubly am-
biguous” standard of this court for indefiniteness is man-
dated not only for our use in deciding cases in which the
patent has already issued and is being challenged (“post-
issuance cases”), but also for cases in which no patent has
yet issued and in which the applied-for claims are being
evaluated by the USPTO (“pre-issuance cases”). He states
that this standard is more favorable to his case than the
standard applied to his claims by the USPTO.
IN RE PACKARD                                           7



    For the reasons we shall explain, we believe that the
case before us can be resolved without addressing the
broad issues raised by Mr. Packard. We conclude that,
when the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a
claim is ambiguous, vague, incoherent, opaque, or other-
wise unclear in describing and defining the claimed
invention, and thereafter the applicant fails to provide a
satisfactory response, the USPTO can properly reject the
claim as failing to meet the statutory requirements of
§ 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. On the facts before us, this holding suffices to
uphold the rejection that occurred here.
                            2.
    The grounds for this holding derive from a combina-
tion of the USPTO’s examination function under 35
U.S.C. § 131 et seq. and the substantive standard of 35
U.S.C. § 112(b). Congress assigned to the USPTO the
responsibility to examine applications to ensure compli-
ance with the statutory criteria for issuance of a patent.
35 U.S.C. § 131. In the USPTO, an applicant’s “claim is,
or is supposed to be, examined, scrutinized, limited, and
made to conform to what he is entitled to.” Keystone
Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278 (1877).
    Congress also provided for examination to be an in-
teractive process, which it commonly is. One or more
rejections or objections by an examiner based on identi-
fied problems are followed by one or more responses from
the applicant that address the identified problems,
whether by revising claims or by furnishing information
and explanation that shows why the initially perceived
problems are not problems after all. 35 U.S.C. § 132; see
8                                             IN RE PACKARD




also id. §§ 133, 134. The examination system regularly
involves substantive interaction with applicants, relying
on their distinctive incentives and abilities to enhance
understanding and to help the USPTO ensure compliance
with statutory standards. 2
    The USPTO must be able to make the congressionally
created examination process work so that it fulfills its
purpose of producing patents whose claims meet the
statutory standards. We earlier approved a procedural
mechanism for the USPTO to use in doing this, which we
refer to as the “prima facie case.” See In re Piasecki, 745
F.2d 1468 (Fed. Cir. 1984). “In the prosecution of a pa-
tent, the initial burden falls on the PTO [examiner] to set
forth the basis for any rejection.” Hyatt v. Dudas, 492
F.3d 1365, 1369-70 (Fed. Cir. 2007). The USPTO thus
meets its obligation to explain adequately the shortcom-
ings it perceives so that the applicant is properly notified
and able to respond. “Once the applicant is so notified,
the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument.” Id.
    The “prima facie case” determination is a purely pro-
cedural device that operates at the examiner level to
clarify how the interaction process proceeds. Thereafter
any final rejection by the examiner, and any review of the
rejection, whether by the Board or through appeal to the


    2   See, e.g., Star Fruits S.N.C. v. United States, 393
F.3d 1277, 1284 (Fed. Cir. 2005) (upholding examiner
demand, under 37 C.F.R. § 1.105, for “information that
the applicant is in the best position to most cheaply
provide”); see also, USPTO, Notice of Public Hearing and
Request for Comments on Issues Related to the Identifi-
cation of Prior Art During the Examination of a Patent
Application, 64 Fed. Reg. 28803, 28805 (1999) (stressing
that “inventors are generally in the best position to be
aware of the state of the art”).
IN RE PACKARD                                              9



courts, turns on the substantive question of the merits of
the rejection. In re Piasecki, 745 F.2d at 1472 (citing In re
Rinehart, 531 F.2d 1048, 1052 (CCPA 1976) (“When
prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over
. . . . An earlier decision should not, as it was here, be
considered as set in concrete, and applicant’s rebuttal
evidence then be evaluated only on its knockdown ability
. . . . [A] final finding of obviousness may of course be
reached, but such finding will rest upon evaluation of all
facts in evidence, uninfluenced by any earlier conclusion
reached . . . .”)); see also In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011).
    The same approach to making the examination pro-
cess work is an appropriate one for addressing the ques-
tion of indefiniteness. We have elsewhere noted that
indefiniteness rejections by the USPTO arise in a differ-
ent posture from that of indefiniteness challenges to an
issued patent. See Exxon Research & Eng’g v. United
States, 265 F.3d 1370, 1380 (Fed. Cir. 2001). It makes
good sense, for definiteness and clarity as for other validi-
ty requirements, for the USPTO initially to reject claims
based on a well-founded prima facie case of lack of clarity
(in its several forms) based on the perspective of one of
ordinary skill in the art in view of the entire written
description and developing prosecution history. Then, if
the applicant does not adequately respond to that prima
facie case, to confirm that rejection on the substantive
basis of having failed to meet the requirements of
§ 112(b). Furthermore, we can reach that conclusion and
decide the present case without regard to the proper
formulation of the judicially-applied indefiniteness stand-
ard that may be appropriate for post-issuance assessment
of indefiniteness, a matter currently under review by the
Supreme Court. See Nautilus, Inc. v. Biosig Instruments,
Inc., 715 F.3d 891 (Fed. Cir. 2013), cert. granted, 82
U.S.L.W. 3195 (U.S. Jan. 10, 2014) (No. 13-369).
10                                            IN RE PACKARD




     As the statutory language of “particular[ity]” and “dis-
tinct[ness]” indicates, claims are required to be cast in
clear—as opposed to ambiguous, vague, indefinite—
terms. It is the claims that notify the public of what is
within the protections of the patent, and what is not. See,
e.g., Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876);
United Carbon Co. v. Binney & Smith Co., 317 U.S. 228,
236 (1942).
     At the same time, this requirement is not a demand
for unreasonable precision. The requirement, applied to
the real world of modern technology, does not contemplate
in every case a verbal precision of the kind found in
mathematics. Nor could it do so in a patent system that
actually works, in practice, to provide effective protection
for modern-day inventions. Rather, how much clarity is
required necessarily invokes some standard of reasonable
precision in the use of language in the context of the
circumstances. See Georgia-Pacific Corp. v. U.S. Plywood
Corp., 258 F.2d 124, 136 (2d Cir. 1958) (“[P]atentable
inventions cannot always be described in terms of exact
measurements, symbols and formulae, and the applicant
necessarily must use the meager tools provided by lan-
guage, tools which admittedly lack exactitude and preci-
sion. If the claims, read in the light of the specifications,
reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language
is as precise as the subject matter permits, the courts can
demand no more.”).
    The USPTO, in examining an application, is obliged to
test the claims for reasonable precision according to these
principles. We have recognized the importance of the role
that the USPTO can play in ensuring that patent claims
are clear and unambiguous. For example, in In re Zletz,
893 F.2d 319, 321-22 (Fed. Cir. 1989), a patent interfer-
ence case, the court said:
IN RE PACKARD                                             11



   during patent prosecution [ ] claims can be
   amended, ambiguities should be recognized, scope
   and breadth of language explored, and clarifica-
   tion imposed. . . . An essential purpose of patent
   examination is to fashion claims that are precise,
   clear, correct, and unambiguous. Only in this way
   can uncertainties of claim scope be removed, as
   much as possible, during the administrative pro-
   cess.
    Recently, in Halliburton Energy Servs., Inc. v. M-I
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (affirming the
district court’s finding that the term “fragile gel” was
indefinite), the court said:
   We note that the patent drafter is in the best posi-
   tion to resolve the ambiguity in the patent claims,
   and it is highly desirable that patent examiners
   demand that applicants do so in appropriate cir-
   cumstances so that the patent can be amended
   during prosecution rather than attempting to re-
   solve the ambiguity in litigation.
                             3.
     Given the role of the applicant in the process, it is a
reasonable implementation of the examination responsi-
bility, as applied to § 112(b), for the USPTO, upon provid-
ing the applicant a well-grounded identification of clarity
problems, to demand persuasive responses on pain of
rejection. That approach decides this case, because Mr.
Packard did not offer a satisfactory response to well-
grounded indefiniteness rejections in this case. The
examiner here, having ample grounds, set forth a variety
of ways in which he found the claims imprecise or confus-
ing, sometimes not even understandable, considering
them in light of the written description. See J.A. 109-12
(June 2010); J.A. 146-47 (Feb. 2011); J.A. 172-73 (July
2011); J.A. 228 (Feb. 2012); see also the more detailed
factual discussion in Judge Plager’s concurring opinion.
12                                           IN RE PACKARD




    Mr. Packard did not respond adequately to this group
of claim language problems. He ignored some entirely.
As to others, he offered brief explanations of what he
thought certain material in the written description and
figures showed. But he did not focus on the claim-
language difficulties, nor did he propose clarifying chang-
es or show why, on close scrutiny, the existing claim
language really was as reasonably precise as the circum-
stances permitted. See J.A. 126 (Nov. 2010); J.A. 151
(May 2011); J.A. 190-193 (Nov. 2011); J.A. 244 (Sept.
2012).
    The Board relied on this failure of response to the ex-
aminer’s well-grounded rejections in affirming on the
merits the examiner’s final rejection. The Board reviewed
and agreed with the examiner’s identification of the
indefiniteness problems that constituted Mr. Packard’s
failure to adequately comply with the statutory require-
ments of § 112(b), and for which there had been no satis-
factory response from Mr. Packard. J.A. 14-16. On
reconsideration, the Board stood by its affirmance of the
rejection, noting the crucial distinction between what Mr.
Packard argued and what is required to address an indef-
initeness problem: Mr. Packard’s “arguments focus on
what is contained in the disclosure, whereas the indefi-
niteness to which [§ 112(b)] is applied is in the language
of the claims.” J.A. 5.
    In some cases it is difficult enough for courts to con-
strue claims when the draftsperson has made every effort
to be clear and concise, let alone when the claims have
readily observable ambiguities or incoherencies within
them. Because Mr. Packard had an opportunity to bring
clarity to his claim language, we affirm the Board’s find-
ings as to indefiniteness under the MPEP standard
properly applied by the USPTO, the standard which we
have here approved.
IN RE PACKARD                                           13



    In view of our judgment upholding the Board’s deter-
mination that the applied-for patent claims are invalid for
failure to comply with the requirements of § 112(b), the
requirement that a claim “particularly point[ ] out and
distinctly claim[ ] the subject matter . . . ,” we need not
address the further issue of the problems with the written
description under § 112(a). 3
                       CONCLUSION
     We affirm the Board’s decision on indefiniteness and
approve the Board’s application of the standard on which
it is based.
                      AFFIRMED




   3     Similar to paragraph 2, paragraph 1 of 35 U.S.C.
§ 112 was replaced with newly designated § 112(a) by
§ 4(c) of the AIA; as explained previously, we have adopt-
ed the current designators.
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

             IN RE THOMAS G. PACKARD
                 ______________________

                        2013-1204
                  ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Serial No.
12/004,324.
                 ______________________
PLAGER, Circuit Judge, concurring.
    I join the per curiam opinion of the court, and fully
support the conclusion stated therein. While the per
curiam opinion reaches the right result and, as far as it
goes, for the right reasons, it decides the case on grounds
not argued by either party.
     I write separately because I am of the view that a pe-
titioner to this court seeking reversal of a decision is
entitled to an explanation of why the arguments on which
he relied for his appeal did not prevail. I also believe that
the significant issues raised by Mr. Packard deserve to be
addressed directly.
    As the per curiam opinion explained, the Board, ap-
plying its understanding of the USPTO standard for
clarity in claim drafting contained in the MPEP, held Mr.
Packard’s applied-for patent claims indefinite—they
“contain[ ] words or phrases whose meaning is unclear.”
In effect, this was a finding by the USPTO that they were
not in compliance with the statutory requirement that
2                                             IN RE PACKARD




“claims particularly point[ ] out and distinctly claim[ ] the
subject matter [of] the invention.” 35 U.S.C. § 112(b). 1
    Mr. Packard, on appeal to this court, insists that the
only proper standard is the “insolubly ambiguous” stand-
ard, which he believes is invariably applied by this court
to challenges to claim construction involving indefinite-
ness of terms, and not the different standard applied to
his case by the Board. He believes that, had the Board
applied the standard he advocates, his claims would not
have been held indefinite.
    To decide Mr. Packard’s appeal on the terms he pre-
sents requires an examination of this court’s ‘indefinite-
ness’ standard as well as the one applied by the Board. If
they differ in significant ways, a determination must be
made of the propriety, as a matter of law, of the Board’s
choice of standard.
    I note at the outset an important point of judicial pro-
cess. The Supreme Court recently agreed to address the
question of the proper standard for this court to apply to
cases coming before the court raising an ‘indefiniteness’
issue, including the role of the “insolubly ambiguous”
standard in this court’s jurisprudence. Fortunately, it is
possible to explore fully the issues in Mr. Packard’s ap-
peal without transgressing upon the Supreme Court’s
territory—more on this later.
    On the merits of the appeal, once we conclude what
standard of review is applicable we would have to decide
the correctness of the Board’s conclusion regarding indef-
initeness of the applicant’s patent claims. For better or
worse, the suspense regarding that part of the case is
gone—the per curiam opinion has announced who wins; to


    1   As we did in the per curiam opinion, since the rel-
evant substantive language has not changed I will use the
current designators for the sections of the statute.
IN RE PACKARD                                             3



help explain the outcome I will only add at the end some
additional salient facts to those contained in the per
curiam opinion.
                            A.
     Addressing then the arguments pressed by Mr. Pack-
ard, I turn first to the judicially crafted law—both of this
court and the Supreme Court—regarding the standard for
clarity of claims in an issued patent. As far back as 1853,
when addressing the definiteness requirement of patents,
the Supreme Court emphasized the overriding policy
considerations that claims must unambiguously define
any invention over the prior art, and provide notice to the
public. See Brooks v. Fiske, 56 U.S. 212 (1853). The
requirement of claim specificity was central “so that the
public may know what they are prohibited from doing
[during the term of the patent] and what they are to have
at the end of the term, as consideration for the grant.” Id.
at 214-15. The Court in Brooks also emphasized that
“[t]he patentee ought to state distinctly what it is for
which he claims a patent and describe the limits . . . for
the purpose of warning an innocent purchaser, or other
person, using the machine, of his infringement . . . .” Id.
at 215.
    This emphasis by the Supreme Court has remained
consistent over the last century and a half. 2 The Supreme



   2    See, e.g., White v. Dunbar, 119 U.S. 47, 52 (1886)
(reiterating that an inventor’s patent claims must “define
precisely what his invention is,” because ambiguity is
both “unjust to the public” and “an evasion of the law.”);
see also Merrill v. Yeomans, 94 U.S. 568, 570-74 (1887)
(finding that a distinct claim is “of primary importance, in
the effort to ascertain precisely what it is that is patent-
ed”); Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S.
364, 372 (1938) (analyzing whether or not the language of
4                                             IN RE PACKARD




Court’s most recent case to date on indefiniteness and
claim clarity is United Carbon Co. v. Binney & Smith Co.,
317 U.S. 228, 236 (1942). 3 Here the Supreme Court wrote
that:
    The statutory requirement of particularity and
    distinctness in claims is met only when they clear-
    ly distinguish what is claimed from what went be-
    fore in the art and clearly circumscribe what is
    foreclosed from future enterprise. A zone of un-
    certainty which enterprise and experimentation
    may enter only at the risk of infringement claims
    would discourage invention only a little less than
    unequivocal foreclosure of the field. Moreover, the
    claims must be reasonably clear-cut to enable
    courts to determine whether novelty and inven-
    tion are genuine. . . . Whether the vagueness of
    the claim has its source in the language employed
    or in the somewhat indeterminate character of the
    advance claimed to have been made in the art is
    not material. An invention must be capable of ac-
    curate definition, and it must be accurately de-
    fined to be patentable. 4
The United Carbon case further pointed out that patent
claims that are “so indefinite as not to give the notice


the claims “conveyed definite meaning to those skilled in
the [relevant] art”).
     3   As noted above, and cited in footnote 10 below, the
Supreme Court currently has before it a case raising the
issue of the standard for indefiniteness under § 112(b).
     4   In this excerpt the Court used the term “claim” in
two different senses: to mean what the patentee was
claiming in the patent as its invention, and in the civil
litigation sense of lawsuit. To avoid confusion, unless
specifically stated otherwise, I will use the unmodified
term “claim” only in the patent sense.
IN RE PACKARD                                              5



required by the statute would be in direct contravention
of the public interest which Congress therein recognized
and sought to protect.” 317 U.S. at 233. As before, this
understanding of the requirement for claim clarity fo-
cused on the precise language of the claim, and related to
a theoretical person of skill in the art—the patent law
version of the reasonable man—and how that person
would understand the claim language.
    The statute referred to by the United Carbon case was
35 U.S.C. § 33 (1932), the predecessor to today’s § 112(b).
That section included almost identical language to the
current requirement—the applicant for a patent “shall
particularly point out and distinctly claim the part, im-
provement, or combination which he claims as his inven-
tion or discovery.” 35 U.S.C. § 33. 5 Even before 1932, the
Act of 1836 had similar language, stating that patent
claims “shall particularly specify and point out the part,
improvement, or combination which he claims as his own
invention or discovery.” See Miller v. Brass Co., 104 U.S.
350, 354 (1882). Thus, throughout this history of patents,
the statutory language regarding claim clarity remained
largely unchanged, and indeed so did the understanding
of what the statute requires.
    After the 1952 enactment of the current Patent Act
(U.S. Patents Act, 35 U.S.C. §§ 1 et seq., 66 Stat. 792 (July
19, 1952)), which now includes § 112(b), 6 cases continued
the focus on the claim language, and what one of ordinary
skill in the art would understand the claim to mean,


    5   The current version of § 112(b) states in full: “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.” 35 U.S.C. § 112(b) (2012).
    6   As explained earlier, pursuant to § 4(c) of the AIA,
section 112(b) replaced paragraph 2 of 35 U.S.C. § 112.
6                                             IN RE PACKARD




viewed in the light of any language in the written descrip-
tion that explained or defined the claim. Sitting en banc,
this court in Phillips v. AWH Corp., 415 F.3d 1303, 1312-
13 (Fed. Cir. 2005) “restat[ed] the basic principles of claim
construction.” We said, “We have made clear, moreover,
that the ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the
invention . . . .”
    In his appeal, Mr. Packard argues that, whatever the
historical standard may have been, the standard for
indefiniteness of a term in a claim is now governed by the
phrase “insolubly ambiguous,” and that under this stand-
ard a claim is not indefinite if a court can give any mean-
ing to the disputed term in the context of the claim. He is
of the view that the “insolubly ambiguous” standard
applies to how this court decides indefiniteness. Further,
he argues, that this standard is mandated for both our
use in deciding cases in which the patent has already
issued and is being challenged (“post-issuance cases”), and
also in cases in which no patent has yet issued but in
which the applied-for claims are being evaluated by the
USPTO (“pre-issuance cases”). He believes that this
standard is more favorable to his case than the traditional
test of what one of ordinary skill in the art would under-
stand, and clearly more favorable than the standard
applied to him by the USPTO.
     Mr. Packard cites as authority the 2001 case of Exx-
on Research and Engineering Company v. United States,
265 F.3d 1371 (Fed. Cir. 2001). In Exxon, the Govern-
ment had filed a motion for summary judgment seeking to
have the two patents at issue held invalid for indefinite-
ness. The trial court—the Court of Federal Claims—
granted the motion.
    On appeal, this court reversed. The court conceded
that a number of the terms in the patents were ambigu-
IN RE PACKARD                                             7



ous—“the trial court was correct to fault the Exxon pa-
tents as lacking in specificity in several respects.” Id. at
1376. Nevertheless, in pursuit of a way to construe the
claims so as to uphold their validity—the court empha-
sized the fact that the Patent Act created a presumption
of validity for issued claims—the court undertook a
lengthy examination of the terms in the patents that were
challenged. The court concluded that, though a close
question (the patentee “could easily have cured the ambi-
guity by adding a single word or phrase to the claims . . .”
id. at 1383), they nevertheless were not fatally flawed.
Id. at 1384.
    At the beginning of the relevant section of the Exxon
opinion addressing the indefiniteness issue (there were
multiple issues in the case), and again at the conclusion of
the full opinion, the court stated the traditional test for
claim construction: whether the claims were so ambiguous
that one of skill in the art could not reasonably under-
stand their scope. See id. at 1375, 1384. However, in the
course of the opinion the court opined that claims need
only “be amenable to construction, however difficult that
task may be,” and that a claim is invalid only when it is
“insolubly ambiguous, and no narrowing construction can
properly be adopted.” Id. at 1375.
    The phrase “insolubly ambiguous” was new; neither of
the two cases cited in support contained the phrase, and
no previous opinion of this court or the Supreme Court
had employed it. It is interesting to note that four years
later, when the court en banc purported to restate, based
on our prior cases, the basic principles of claim construc-
tion, no mention was made of either Exxon or of the
phrase “insolubly ambiguous.” See Phillips, 415 F.3d at
1312.
    Whatever the court in Exxon may have intended by
the “insolubly ambiguous” phrase, Mr. Packard is not
alone in his employment of it and what it seemed to
8                                             IN RE PACKARD




mean. A number of later cases in this court dealing with
indefiniteness issues recited both the traditional version
of the doctrine—that the test was what one of ordinary
skill in the art would understand the claim limitation to
mean, or some variant of that language—and then at
some point employed the Exxon notion of “insolubly
ambiguous”—that claims need only be amenable to con-
struction, however difficult for a court that task may be.
Given this state of affairs, it should come as no surprise
that it was not always clear which version of the test, or
what other factors, may actually have dictated the result
in some of these cases. 7
     For completeness, I note that the perceived differ-
ences in this court’s articulation of the indefiniteness
standard is said to have had an effect on the behavior of
the trial courts as well. In a study of district court cases
in the years immediately following Exxon (2001-2005), the
author of the study stated that during those years “dis-
trict courts sparingly invalidated patents for lack of
definiteness.” See David A. Kelley, In the Wake of Datam-
ize and Halliburton: The Recent Spate of Patent Invalida-
tions for Indefiniteness and the Implications for Patent
Holders, 75 Pat. Trademark & Copyright J. (BNA) 456
(2008). The study noted, however, that there was a sharp
increase in invalidations after 2005 and the issuance of




    7    See Christa J. Laser, A Definite Claim on Claim
Indefiniteness: An Empirical Study of Definiteness Cases
of the Past Decade with a Focus on the Federal Circuit
and the Insolubly Ambiguous Standard, 10 Chi.-Kent J.
Intell. Prop. 25, 25 (Fall 2010) (“These differences [among
the cases analyzed] partially result from the Federal
Circuit incorporating an evidentiary burden into the
‘insolubly ambiguous’ standard and inconsistently apply-
ing the ‘insolubly ambiguous’ standard.”).
IN RE PACKARD                                             9



Datamize, LLC v. Plumtree Software, Inc., 417 F.3d. 1342,
1347 (Fed. Cir. 2005). Id.
     In Datamize the court cited to the Exxon “insolubly
ambiguous” language, but then added that “[s]ome objec-
tive standard must be provided in order to allow the
public to determine the scope of the claimed invention,”
id. at 1350; consequently the court held the phrase “aes-
thetically pleasing” to be fatally ambiguous. 417 F.3d at
1356. The author of the district court study reads this
addition as undercutting the Exxon standard, and, accord-
ing to the study, indefiniteness invalidations in the dis-
trict courts rose nearly 250 percent in the 30 months
following Datamize, compared to the 30 months preceding
it. 8 (The other case the study thought significant, Halli-
burton Energy Servs., Inc. v. M-I LLC, 514 F.3d. 1244
(Fed. Cir. 2008), affirmed a district court’s holding that
“fragile gel” was fatally ambiguous, citing the Datamize
standard.)
    Thus, over time the “insolubly ambiguous” phrase
that Mr. Packard alleges is the only correct test of indefi-
niteness has taken on a life of its own. It has generated
considerable controversy, 9 and has now led to this case in


   8    See also David A. Kelley, Indefiniteness Invalida-
tions Continue to Rise Sharply in 2008, 77 Pat. Trade-
mark & Copyright J. (BNA) 576, 576 (2009).
    9   See, e.g., Dennis Crouch, Is “Insolubly Ambiguous”
the Correct Standard for Indefiniteness?, PATENTLY-O
(Sept. 21, 2013), http://patentlyo.com/patent/2013/09/is-
insolubly-ambiguous-the-correct-standard-for-
indefiniteness.html; Federal Trade Comm’n, The Evolving
IP Marketplace: Aligning Patent Notice and Remedies
with      Competition,       94-103      (March     2011),
http://www.ftc.gov/reports/evolving-ip-marketplace-
aligning-patent-notice-remedies-competition; David A.
Loewenstein and Clyde Shuman, United States: The
10                                            IN RE PACKARD




which the issue of what the phrase might mean is argued
as determinative of the appellant’s patent rights. And
most recently it has led to a petition to the Supreme
Court, that the Court has now granted, that challenges
the fundamental validity of the “insolubly ambiguous”
standard. 10
    Of particular importance to this discussion and to the
outcome in the case, and though Mr. Packard’s argument
is to the contrary, for purposes of deciding this case it is
not necessary to determine whether the traditional test
employed by courts for determining indefiniteness has or
has not been modified or superseded by Exxon’s “insolubly
ambiguous” phrase. Nor is it therefore necessary, assum-
ing “insolubly ambiguous” differs from the traditional
test, to address whether that test is a permissible reading
of the statutory requirement that claims “particularly
point[ ] out and distinctly claim[ ] the subject matter” of
the invention. As noted, the Supreme Court has decided
that it is the proper forum for those questions, and it
would be inappropriate at this time for a lower court to
address them in an opinion.
    Fortunately, I need not go there in order to judge Mr.
Packard’s arguments. This is because, having now identi-
fied these two arguably controlling tests applied by this


Federal Circuit’s “Insolubly Ambiguous” Standard of
Indefiniteness, MONDAQ BUSINESS BRIEFING (Nov. 26,
2008),       http://www.mondaq.com/unitedstates/x/70266
/Patent/The+Federal+Circuits+Insolubly+Ambiguous+Sta
ndard+Of+Indefiniteness; Eric Yeager, Claim Whose
Undefined Terms Are Reasonably Discernable Is Not
Invalid, 67 Pat. Trademark & Copyright J. (BNA) 427
(2004).
    10  Nautilus, Inc. v. Biosig Instruments, Inc., 715 F.3d
891 (Fed. Cir. 2013), cert. granted, 82 U.S.L.W. 3195 (U.S.
Jan. 10, 2014) (No. 13-369), argued on April 28, 2014.
IN RE PACKARD                                             11



court to cases on review from the district courts, it will be
enough to show that both of the tests, whatever their
scope may be, differ in material respects from the test
applied to Mr. Packard’s claims by the Board. And then,
it will be only necessary to decide whether the USPTO
test, even though it differs materially from ours, is a
permissible one under the law for the Board to apply to
proposed claims under USPTO review.
                             B.
    Before proceeding further, there are definitional ques-
tions that require some clarification. So far I have used
the term “indefiniteness” as shorthand for the complex of
issues surrounding the requirements for clear drafting in
patents. It is the custom among patent practitioners, and
the courts as well, to refer to something called “indefi-
niteness” as a generalized drafting error that, when
recognized, will invalidate a patent, or a patent claim in
particular. However, the term “indefiniteness” (or its
grammatical variants) subsumes several different and
distinct issues that require separate analysis.
    First, as a matter of legal terminology there is, under
current law, no statutory reference to a definiteness
requirement, nor a statutory provision that invalidates a
patent or a patent claim for “indefiniteness.” The rele-
vant statutory requirements are found, as earlier noted,
in section 112 of the Patent Act. This section is entitled
“Specification.” Subsection (a) of section 112 states that
“the specification shall contain a written description of the
invention,” and sets out specific criteria for judging its
adequacy—it must be set out in “full, clear, concise, and
exact terms . . . .” 35 U.S.C. § 112(a) (2011).
    As previously noted, subsection (b) of § 112 provides
that the Specification shall conclude with one or more
claims “particularly pointing out and distinctly claiming
the subject matter which the inventor . . . regards as the
invention.” 35 U.S.C. § 112(b) (2011). Thus, the written
12                                            IN RE PACKARD




description (which presumptively includes the significant
parts of the patent related to claim construction other
than the claims themselves) and the claims themselves
each have separate and specific criteria they must meet. 11
    There is a second level of distinction that is important
to recognize in any given case. In terms of inadequacy of
descriptiveness to meet the applicable statutory standard,
whether for a written description or for a claim, a term or
phrase may have one of two shortcomings: it may be
ambiguous, or it may be incoherent. (For simplicity,
hereafter I will use “term” to include “phrase,” i.e., to
include one or more words.)
    An incoherent term means that there is no reasonably
understandable meaning of the term in the context in
which it appears. More correctly, it means that one of
ordinary skill in the art cannot ascertain any reasonable
meaning of the term as used. In patent litigation the
labeling of a disputed patent claim term as “incoherent” is
rarely seen.


     11  With regard to terminology, the casual use by
practitioners, including counsel in this case, of “specifica-
tion” when what is meant is actually the “written descrip-
tion” is incorrect, though widely practiced. The statutory
term “specification” includes both the written description
and the claims. The use of the broader term “specifica-
tion” when what is meant specifically is “written descrip-
tion” adds to verbal confusion as well as the potential for
thought confusion. Importantly, there are no statutory
requirements as such governing the adequacy of some-
thing called a “specification,” while there are specific
statutory requirements governing both the “written
description” and the “claims.” The late honored and
beloved Judge Giles Rich, one of the principal architects of
the 1952 Patent Act, decried the profession’s constant
misuse of these terms.
IN RE PACKARD                                             13



    An ambiguous term, on the other hand, is a term that
offers to one of skill in the art more than one reasonable
meaning, each of which meanings may have more or less
justification in context for being what was intended, and
each of which meanings would result in different patent-
ly-distinctive outcomes. This is the oft-seen claim con-
struction dispute, in which each party in a patent suit will
provide expert testimony from one of allegedly ordinary
skill in the art in support of that party’s construction of a
disputed claim term, in hopes that it will be adopted by
the court and result in a ruling in the party’s favor,
whether regarding validity or infringement, or both.
   The interpretive issue in these claim construction dis-
putes presents several policy options, including:
    1) Give controlling weight to the policy of upholding
the USPTO’s decision to issue a presumptively valid
patent, with substantially less concern for the notice
function of patents. Thus, find a possible meaning that
preserves the validity of the patent claim, without partic-
ular regard for what competitors or the public might have
understood, i.e., what would be understood by those
skilled in the art involved at the time of the invention. 12
    Since claim construction is a matter of law with no
formal deference given to the trial judge (Cybor Corp. v.
FAS Tech., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc);
see also Lighting Ballast Control LLC v. Philips Elecs. N.
Am. Corp., ___ F.3d ___, 2014 WL 667499 (Fed. Cir. Feb.



    12  But see Phillips, 415 F.3d at 1327 (“While we have
acknowledged the maxim that claims should be construed
to preserve their validity, we have not applied that prin-
ciple broadly, and we have certainly not endorsed a re-
gime in which validity analysis is a regular component of
claim construction.”)
14                                             IN RE PACKARD




21, 2014), under this interpretive option the “right” con-
struction will be known definitively only when the Court
of Appeals judges (or the Supreme Court) choose it.
     2) Give weight to the notice function of patents, while
still recognizing the role of the presumption of validity.
Thus, choose from among the available meanings the one
that seems to best accord with what one of reasonable
skill in the art would understand to be intended, and
which the public, including competitors, would assume to
be the correct reading. When there is more than one such
understanding, as sometimes appears to be the case, this
could lead to a preference for the understanding that
preserves the validity of the patent claim. 13
    3) Give full weight to the importance of the notice
function of patents, recognizing that it is the claim draft-
er/patentee who is ultimately responsible for problems
created by ambiguous terms. When confronted with a
patent claim that has several reasonable meanings for
which the patent itself demonstrates no preference (and
certainly true of an incoherent term), the result of this
option would be a holding that an ambiguous term by
definition fails to comply with the statutory requirements
for claim drafting. Thus, if a member of the public in
order to understand the patent claim must guess about
the meaning of an ambiguous term, the claim would not
be patentable and is otherwise invalid. 14



     13 See Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d
1573, 1581 (Fed. Cir. 1996), for a subset of this option,
choosing the narrowest meaning that upholds the patent,
thus maximizing the opportunity for competitors to design
around it without infringing.
    14  For a statement of this interpretive option by the
courts in Canada, see Lord Loreborn’s three-part test,
cited in Harold C. Wegner, Lord Loreborn’s Test for
IN RE PACKARD                                             15



     When addressing “indefiniteness” in an issued patent
(a post-issuance case), these are among the interpretive
options available to judges. Mr. Packard’s argument
regarding the “insolubly ambiguous” standard essentially
incorporates the first of these interpretive options. As
between the second and third interpretive options, there
appears to be nothing in the cases invoking the tradition-
al standard—what one of ordinary skill in the art would
understand—that necessarily dictates which of these
latter interpretive options controls in a given case, or even
whether there should be an established policy option for
all post-issuance cases.
                             C.
    The discussion thus far has focused on the question of
this court’s standard for review of compliance with the
statutory requirement for claims as they appear in issued
patents, the post-issuance situation. This examination
was made necessary by Mr. Packard’s insistence that this
court has a singular standard for such cases, that this
standard differs materially from the standard applied by
the Board to his case, and that our standard is the one
that must be used by the Board.
     However, the above discussion reveals that there cur-
rently is not one singular standard used by this court but
rather a complex of standards, though a complex whose
range nevertheless can be described. The question then
remains, is the Board’s standard substantively different
from the standard(s) ostensibly applied by this court and,
if so, is it nevertheless permissible.
    Mr. Packard is correct when he argues that this
court’s “standard” (or complex of standards, however


§112(b) Indefiniteness, Paper presented at the Second
Annual Naples Midwinter Patent Experts Conference,
Naples, FL (February 10-11, 2014).
16                                            IN RE PACKARD




understood) for indefiniteness in post-issuance cases
differs materially from the standard for indefiniteness
applied by the Board to pre-issuance cases. In its opinion
in this case the Board, as noted earlier, invoked as its
standard for determining compliance with the require-
ments of § 112(b) the standard set forth in the MPEP: a
claim is indefinite when it contains words or phrases
whose meaning is unclear. See MPEP § 2173.05(e).
     In effect, the USPTO reads the statutory requirement
that claims “particularly point[ ] out and distinctly claim
[ ] the subject matter . . .” to mean that ambiguity in
claiming, whether intended or inadvertent, is not ac-
ceptable. 15 The patent examiner’s duty is to insist that
the applicant remove the perceived ambiguity by more
precisely defining the scope of the claim. And should an
examiner’s rejection on grounds of noncompliance with
the statute be taken up on appeal to the Board, the Board
will enforce the same standard. This position comports
most closely to the third of the policy options outlined in
the preceding section.
    From its response to Mr. Packard, I understand the
Board position to be that it applies the traditional test to
claims proposed by a patent applicant, namely, whether
what is claimed is reasonably understood by one of ordi-
nary skill in the art. However, in applying this test the
Board does so in a manner—the “lower threshold”—that
is uniquely applicable to the pre-issuance situation.



     15 See 3M Innovative Props. v. Tredegar Corp., 725
F.3d 1315, 1334 (Fed. Cir. 2013) (Plager, J., concurring)
(“[s]ometimes such ambiguity [in claim drafting] is the
result of sloppy drafting, and sometimes it appears that
claims are drafted with a degree of indefiniteness so as to
leave room to later argue for a broad interpretation de-
signed to capture later-developed competition.”).
IN RE PACKARD                                             17



    A review of our post-issuance cases reveals that when
this court has been called upon to decide an indefiniteness
challenge, no opinion has yet expressly adopted the third
interpretive option described previously, essentially the
one that the USPTO now uses. Thus our precedents
make clear that, whether our standard is thought to be
either the first option—“insolubly ambiguous” (however
understood)—or the second option—the traditional “one of
ordinary skill” test—discussed earlier, the USPTO’s
application of the traditional standard goes well beyond
what this court is known to apply to claim interpretation
when the issue is post-issuance compliance with § 112(b).
     Thus the issue remaining to be decided is whether the
Board, as a matter of law, is entitled to apply the third
interpretive option to its understanding of the traditional
test for indefiniteness. Mr. Packard argues that the
Board may not do that. He propounds that in his case the
Board applied the wrong standard for indefiniteness in
two ways. First, Mr. Packard argues that a “person of
ordinary skill in the art is deemed to read the claim term
not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire
patent, including the specification.” Appellant’s Br. 35
(citing Phillips, 415 F.3d at 1313). The Board, he argues,
refused to do that, and instead stated that its analysis
focused solely on “the language of the claims, . . . [not] on
what is contained in the disclosure.” Id. at 36.
    Second, and more to the point, Mr. Packard argues
that the Board wrongly invoked its own “lower threshold”
for indefiniteness, rather than this court’s “insolubly
ambiguous” standard. Mr. Packard argues that it is an
error for the Board to adopt a test for indefiniteness that
differs from what he describes as this court’s “long-
established ‘insoluble ambiguity’” test. Appellant’s Br. 18.
He further argues that the “Board cannot ignore this
[c]ourt’s precedent or substitute its own test for indefi-
niteness for this [c]ourt’s analysis.” Id. at 39. Overall, in
18                                            IN RE PACKARD




Mr. Packard’s view, “this [c]ourt has consistently applied
a single standard for claim definiteness, both pre-issuance
and post-issuance,” and Mr. Packard argues that “[t]he
Board’s rejection of this [c]ourt’s ‘insolubly ambiguous’
standard and its implicit application of a ‘lower threshold
of ambiguity’ pursuant to Miyazaki was error.” Id. at 38-
39 (citing Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211
(B.P.A.I. 2008)).
    The USPTO, in response to Mr. Packard’s first point,
argues that the Board’s decision clearly shows that it
attempted to read the claims in light of the written de-
scription. “But the specification [read written description]
only added to the ambiguity of the claims, because it
describes the features of the coin-holder in a manner both
internally inconsistent and inconsistent with the
claims.” 16 Appellee’s Br. 8.
    Second, addressing the main question, that of the
proper test for the Board to use, the USPTO says it “asks
the same question as this [c]ourt in assessing the indefi-
niteness of a claim—i.e., whether a skilled artisan could
reasonably discern the metes and bounds of the claim.”
Id. at 9. But, says the USPTO, while their approach to
answering that question during prosecution may effective-
ly result in a lower threshold for ambiguity than a court’s,
their approach provides a legitimate means for ferreting
out indefinite claims prior to issuance.
    The USPTO argues that the patent system works best
when claim ambiguity is resolved during examination,
rather than to await litigation to determine the actual
scope of a claim. Accordingly, says the USPTO, the



     16The USPTO also pointed out that the Board did
not rely upon the Miyazaki decision in upholding the
Examiner’s rejection of the claims for indefiniteness.
Appellee’s Br. 21.
IN RE PACKARD                                            19



agency must have the ability to require applicants to
amend their claims to ensure that the claims are concise,
clear, and unambiguous, or in the words of the statute,
that they particularly point out and distinctly claim the
subject matter which the inventor regards as the inven-
tion.
    As I noted at the end of introductory section A, above,
the issue of the permissible test for USPTO pre-issuance
indefiniteness cases can be decided without resolving
whether this court’s current test for post-issuance indefi-
niteness is the traditional standard, focused on what one
of skill in the art would understand, or the allegedly
different “insolubly ambiguous” standard as Mr. Packard
views it, or some combination of the two. This is because,
as the above discussion makes clear and as Mr. Packard
argues, the test proposed by the Board for its use in pre-
issuance claim disputes differs materially from this
court’s application of either (or both) of those standards.
On this question I agree with Mr. Packard.
                            D.
     I turn then to Mr. Packard’s underlying argument,
that the test applied by the Board to pre-issuance matters
of claim interpretation cannot differ from that applied by
this court to post-issuance claim construction disputes.
As explained above, the Board proposes to apply the
traditional standard but with the third of the interpretive
policy options outlined earlier. Namely, if one of ordinary
skill in the art, after considering the information provided
by the applicant including the written description, and
after putting the disputed term in the context of the
proposed patent, finds the claim to contain words or
phrases whose meaning is unclear, then the examiner is
to require the applicant to “more precisely define the
metes and bounds of the claimed invention” by issuing an
indefiniteness rejection. See Miyazaki, 89 U.S.P.Q.2d at
1211. And on appeal to the Board, should the applicant
20                                            IN RE PACKARD




fail or refuse to provide the needed clarification, the
Board will apply the same interpretation requirement.
    In my view (and that of the per curiam court), it is
within the authority of the USPTO to so interpret the
applicable standard. Further, it is my view that, as a
policy matter, this court should support the USPTO in so
doing. To begin with, I find nothing in the statutes that
precludes the USPTO from adopting such guidance for the
examiners and the Board. 17 Beyond that, no precedent of
this court or of the Supreme Court addressing patent
claim construction issues suggests that such a position on
the part of the USPTO would be beyond its authority in
the proper administration of the governing statutes. On
the contrary, as pointed out in the per curiam opinion,
this court in In re Zletz, 863 F.2d 319 (Fed. Cir. 1989), and
in Halliburton, 514 F.3d 1244 highlighted the important
role that the USPTO, through its examination process,
plays in ensuring the quality of patents and compliance
with the statutory requirements.
    The problem of indefiniteness in patent claiming has
been a major concern of courts, as well as commenta-
tors, 18 and efforts by the USPTO to improve the situation


     17 There is no issue regarding the USPTO’s rule-
making authority. The application of a “lower threshold”
for ambiguity is an interpretive policy regarding an
already existing statutory standard. It is not the estab-
lishment of a new previously non-existent substantive
standard such as would be at issue in a Chevron-type
analysis.
    18  Phillips, 415 F.3d at 1312 (“The role of the specifi-
cation in claim construction has been an issue in patent
law decisions in this country for nearly two centuries.”);
Laser, supra note 5, at 25 (An empirical study of patent
claim definiteness cases finding that the Federal Circuit
inconsistently applies the “insolubly ambiguous” standard
IN RE PACKARD                                             21



certainly are to be encouraged. There are good reasons
why unnecessary incoherence and ambiguity in claim
constructions should be disapproved:
   •   they generate many of the claim construction dis-
       putes that plague the courts; 19
   •   they increase the cost to the society of new products
       and ideas. As one study put it, “[l]ow quality pa-
       tents are those that protect inventions of limited


when evaluating claim clarity.); Jeanne C. Fromer,
Claiming Intellectual Property, 76 U. Chi. L. Rev. 719,
772-781 (2009) (arguing for a return to ‘central’ claiming
and a departure from ‘peripheral’ claiming in patent
cases); Monica C. Moran and Tony Dutra, Professor
Suggests Supplementing Patent, Copyright Claiming to
Stimulate Innovation, 77 Pat. Trademark & Copyright J.
(BNA) 41, 41 (2008) (analyzing Jeanne Fromer’s central
claiming arguments); Kirk M. Hartung, Claim Construc-
tion: Another Matter of Chance and Confusion, 88 J. Pat.&
Trademark Off. Soc’y 831, 831 (2006) (“Unfortunately,
claim construction still is a matter of chance and confu-
sion for patent owners, accused infringers and their
patent attorneys. And the matter is only getting worse.”);
S. Jay Plager, Challenges for Intellectual Property Law in
the Twenty-First Century: Indeterminacy and Other
Problems, 2001 U. Ill. L. Rev. 69, 72 (2001) (“The chal-
lenge here is how to help trial judges, as well as ourselves,
understand what is being claimed so that there is less
room for misunderstanding.”).
    19  See, e.g., James R. Barney and Charles T. Collins-
Chase, An Empirical Analysis of District Court Claim
Construction Decisions, January to December 2009, 2011
Stan. Tech. L. Rev. 2, 7 (2011); see also, David L.
Schwartz, Practice Makes Perfect? An Empirical Study of
Claim Construction Reversal Rates in Patent Cases, 107
Mich. L. Rev. 223, 246 (Nov. 2008).
22                                                IN RE PACKARD




          novelty or that provide overly broad protection . . . ,
          which can be costly to society,” Patents and Innova-
          tion: Trends and Policy Challenges, OECD, 28
          (2004),          http://www.oecd.org/science/sci-tech
          /24508541.pdf;
     •    they inhibit the opportunity for design-arounds and
          legitimate competition. A Federal Trade Commis-
          sion Study observed that an overly broad patent
          “can block competition . . . and harm innovation,”
          Federal Trade Commission, To Promote Innovation:
          The Proper Balance of Competition and Patent Law
          and Policy, A Report by the Federal Trade Commis-
          sion, at 3 (October 2003), http://www.ftc.gov
          /sites/default/files/documents/reports/promote-
          innovation-proper-balance-competition-and-patent-
          law-and-policy/innovationrpt.pdf; 20
     •    and they waste scarce judicial resources on claim
          construction cases that should never have been
          necessary to litigate, supporting and encouraging
          the kinds of litigation that have made “patent
          trolls” dirty words. (Patent trolls are also known
          by a variety of other names: “patent assertion enti-
          ties” (PAEs), “non-practicing entities” (NPEs).) 21



     20  See also Keith E. Maskus, Reforming U.S. Patent
Policy: Getting the Incentives Right, COUNCIL ON FOREIGN
RELATIONS, CSR No. 19, at 19 (Nov. 2006), available at
http://www.cfr.org/content/publications/attachments/Pate
ntCSR.pdf (“[P]atent holders with broad claims on plat-
form technologies may try to use those claims to discour-
age competitors through licensing restrictions and
litigation against technologies on similar products.”)
     21  See, e.g., Executive Office of the President, Patent
Assertion and U.S. Innovation, at 9 (June 2013),
http://www.whitehouse.gov/sites/default/files/docs/patent_
IN RE PACKARD                                           23



    Beyond these persuasive policy reasons, as a legal
matter the USPTO does not have to deal with the pre-
sumption of validity the statutes grant to post-issuance
patents—sometimes said to hinder such an interpretation
by courts. Furthermore, unlike courts which have a full
prosecution record to consider, the prosecution record
before the USPTO is in development and not fixed during
examination, and the USPTO does not rely on it for
interpreting claims.
    The fact that this court has not yet seen fit to apply
the same interpretive policy option to post-issuance cases
as the USPTO wishes to apply to pre-issuance cases is no
reason why the USPTO, given its unique and central role
in the patenting process, should not be able to apply it in
dealing with pre-issuance patent applications.
    In short, there are no legal obstacles to the USPTO’s
proposed interpretation, and there are compelling reasons
why, as a policy matter, this court should not preclude or
otherwise interfere with the USPTO carrying out its full
responsibilities under the Patent Act. Further, there is no
reason why those trained and employed in the art of


report.pdf (“Even if patent assertion entities do not pre-
vail in the courtroom, their actions can significantly
reduce incremental innovation while litigation is ongoing,
a situation that can persist for years,”); James Bessen, et
al., The Private and Social Costs of Patent Trolls, 34
Regulation 26, 26 (Winter 2011-2012) (“To the extent that
. . . NPEs opportunistically assert ‘fuzzy patents’ against
real technology firms, they can decrease the incentives for
these firms to innovate.”); but see Mark A. Lemley & A.
Douglas Melamed, Missing The Forest For the Trolls, 113
Colum. L. Rev. 2117, 2117 (2013) (“trolls are a symptom of
larger flaws in the patent system . . . those who have
focused on trolls have, in effect, been missing the forest
for the trolls.”).
24                                             IN RE PACKARD




patent and patent claim drafting cannot comply with the
USPTO requirements, recognizing that the nature of the
invention and the particular art involved will affect the
degree to which precision in language is possible. 22
                             E.
    Finally, as noted in the per curiam opinion, I offer a
few additional notes with regard to the question of Mr.
Packard’s proposed claims and their compliance with the
standard of review the USPTO has chosen to apply.
    The disputed phrases and arguments of Mr. Packard
and the USPTO are outlined in Appendix 1. I agree with
the Board that the term “front top side” is indefinite. Mr.
Packard might have used either “front side” or “top side”
and done so in a way that was consistent with the termi-
nology in the written description. Using different terms
to refer to the same portion of the card—“front top side”
and “surface of the card”—creates its own ambiguity.
Thus, I would affirm the Board’s finding that the terms
“front top side” and “surface of the card” are indefinite.
     I also agree with the Board that Mr. Packard created
an ambiguity in his claims when he introduced “a raised .
. . end edge” and then referred later to “the . . . edge end.”
It is not clear whether these two phrases refer to the same
“end” or to two different “ends.” Mr. Packard should have
corrected this ambiguity during prosecution. Therefore, I
would affirm the Board’s finding that the claim terms “a
raised . . . end edge” and “the edge end” are indefinite.
Lastly, I agree that it is unclear whether “one side edge”
refers back to the “double flanged side edges” introduced


     22 See generally Thomas Suddendorf, The Gap: The
Science of What Separates Us from Other Animals (Basic
Books, 2013) (the difference ultimately is the motivation
of authors to create symbols and grammar to share what
they know).
IN RE PACKARD                                            25



previously in the claim or if it refers to something else
entirely. Therefore, I would affirm the Board’s finding
that this term is indefinite.
    I have considered each of Mr. Packard’s remaining ar-
guments and find them unpersuasive. Mr. Packard’s over
ten pages of explanatory briefing illustrates that the
claim language itself lacks the requisite minimum clarity
to define the boundaries of the claims. By leaving the
claims ambiguous, the public and the courts are left to
clarify the patent’s boundaries, in direct conflict with the
requirements of the case law. See, e.g., United Carbon,
317 U.S. at 236.
    As stated at the beginning of this opinion, I arrive at
the same conclusion as we arrived at in the per curiam
opinion. I get there both by way of the “narrow” route in
the per curiam opinion, which I join, and also by way of
addressing Mr. Packard’s arguments directly; for the
reasons I explained I find the latter unavailing.
26                                                IN RE PACKARD




                      APPENDIX 1



 Disputed       Mr. Packard’s                 USPTO’s
  Term           Argument                     Argument

“flat         The Board erred by         “[F]lat    plane”     is
plane”        construing         “flat   indefinite on the
              plane” to be so            basis      that     the
              perfectly           and    claimed card cannot
              impossibly        “flat”   be a flat plane when
              that it could not          its front top side also
              include       “raised”     includes a plurality
              edges. The written         of “raised” edges.
              description makes          “[F]lat,” by its plain
              it clear that the          meaning      in    the
              “flat plane . . . card”    dictionary,     means
              is not intended to         having a smooth
              be absolutely flat,        level surface, and the
              but rather it is           court    should    not
              described          with    redraft the claims to
              many raised com-           mean “mostly flat.”
              ponents.

“front top    The “front top side”       “[F]ront top side” per
side” and     is the entire front        se lacks clarity, as it
“surface of   side of the card,          suggests that the
the card”     including     struc-       front side possesses
              tures such as the          both “top” and “bot-
              raised edges.              tom” portions, of
                                         which     claim     28
              “[T]he     surface”
                                         specifies that only
              requires no ante-
                                         the “top” portion
              cedent basis be-
                                         contains the separa-
              cause the card only
                                         tors and retainers.
              has two surfaces,
              and one skilled in Because the claim
              the    art   would employs two different
IN RE PACKARD                                              27



                understand      that   terms, “the surface”
                “the surface” is on    does not necessarily
                the side of the card   imply the “front top
                where the coins are    side,” as the Board
                stored.                correctly explained.

“the raised “[T]he raised side         This term has no
side   end end edge” does not          antecedent basis.
edge”       lack     antecedent        Also, as the Board
            basis because a            observed,     whether
            person of skill in         the term “a raised
            the    art     would       side edge end” refers
            understand that it         to the west or the
            refers     to     the      east edge of the coin
            claimed       “raised      holder is unclear
            side edge end.”            because the claim
                                       provides no location
                                       for this element, and
                                       the specification fails
                                       to describe “a raised
                                       side edge end.”

“one side The     “one    side         Ambiguity exists as
edge”     edge”    does    not         to whether the “one
          require antecedent           side edge” refers back
          basis because it is          to     the     “double
          not preceded by              flanged side edges”
          “the” or any other           located at the north
          word referring to a          and south edges of
          previous      claim          the coin holder, or
          element.                     some other edge,
                                       such as the west edge
                                       of the coin holder.
