2. USPTO Efforts at Enhancing Clarity By Ensuring That Claims Are Definite Under 35 U.S.C. 112(b)
Carolyn B. Kosowski
July 13, 2016
Presented at the USPTO Technology Centers 3600 & 3700 Partnership Meeting
11/26/2018

3. Overview 35 U.S.C. 112(b) Training Overview
Recent training on enhancing clarity by ensuring that claims are definite under 35 U.S.C. 112(b)
Examples

4. Recent training completed in May 2016
35 U.S.C. 112(b) Training
Prior training
Claim Interpretation: Functional Language and Broadest Reasonable Interpretation modules (2015)
35 U.S.C. 112(f): Broadest Reasonable Interpretation and Definiteness of § 112(f) Limitations module (2014)
2011 § 112 Guidelines training slides and examples
Recent training completed in May 2016
Enhancing Clarity by Ensuring that Claims are Definite Under § 112(b)

5. Goals of the recent training
Understand how enforcing the § 112(b) definiteness requirement enhances patent quality and clarity
Identify the critical roles of examiners and applicants in enhancing clarity of the claims and the prosecution record
Recognize the importance of explaining the grounds of rejection when the boundaries of the claim are unclear to provide a thorough written record
Note: These slides focus on the benefits of clarity and how appropriate § 112(b) rejections can be leveraged for enhancing the record, rather than specific issues relating to enforcement of § 112(b)
These slides are intended to raise awareness of the important role of 35 USC 112(b), the so-called “definiteness” requirement, in clarifying the boundaries of claims and in enhancing the prosecution record. The goals are to:
Understand how enforcing the § 112(b) definiteness requirement enhances patent quality and clarity;
Identify the critical roles of examiners and applicants in enhancing clarity of the claims and the prosecution record; and,
Recognize the importance of explaining the grounds of rejection when the boundaries of the claim are unclear to provide a thorough written record.
These slides are not intended to address specific issues relating to enforcement of § 112(b), but rather focus on the benefits of clarity and how appropriate § 112b rejections can be leveraged for enhancing the record. For detailed information on specific topics relating to § 112(b) see MPEP and 2173, in general. Also, past training on specific issues under 112(b) can be found on uspto.gov on the “Examination Guidance and Training Materials” page. Resources are identified at the end of this presentation.

6. 35 U.S.C. 112(b) Definiteness Requirement
Claims must define the boundaries of the invention by particularly pointing out and distinctly claiming the subject matter applicant regards as his or her invention
A claim that clearly identifies the boundaries of the claim scope is “definite”, i.e., it complies with § 112(b)
A claim with unclear boundaries is “indefinite”, i.e., it does not comply with § 112(b), and it must be rejected
Definiteness is measured from the viewpoint of a person of ordinary skill in the relevant art at the time the application was filed
MPEP 2173 et seq.
35 USC 112(b) requires that claims define the boundaries of the invention by particularly pointing out and distinctly claiming the subject matter applicant regards as his or her invention.
In the context of examination, a claim that clearly identifies the boundaries of the claim scope is “definite”, i.e., it complies with § 112(b), while a claim with unclear boundaries is “indefinite”, i.e., it does not comply with § 112(b). An indefinite claim must be rejected.
It is important to keep in mind that definiteness is measured from the viewpoint of a person of ordinary skill in the relevant art at the time the application was filed.
After issuance, courts construe a claim for definiteness by determining whether a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. As recently emphasized by the U.S. Supreme Court, “the definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.” See, Nautilus, Inc. v. Biosig Instruments, Inc., 110 USPQ2d 1688, 1693 (U.S. Supreme Court 2014).

7. Purpose of 35 U.S.C. 112(b)
Ensures understanding of the claimed invention throughout a patent’s lifecycle:
During examination, an examiner’s understanding of what is claimed is critical for determining whether all criteria for patentability of the claims and corresponding requirements for the specification are met
After issuance of a patent, the public will have a better understanding of the patent protection granted and what constitutes infringement
The PTAB and courts will be informed when construing the claims as to what the examiner and the applicant understood the claims to mean
The purpose of 35 USC 112(b) is to ensure understanding of the claimed invention throughout a patent’s lifecycle. That includes:
- during examination when an examiner’s understanding of what is claimed is critical for determining whether all criteria for patentability of the claims and corresponding requirements for the specification are met; and
- after issuance of a patent so the public will have a better understanding of the patent protection granted and what constitutes infringement, and the PTAB and courts will be informed when construing the claims as to what the examiner and the applicant understood the claims to mean.
As emphasized in the recent Supreme Court Nautilus case, it is a bedrock principle of patent law that “[t]he statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.” [(United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236, 55 USPQ 381 (1942))] and that “[t]he limits of a patent must be known for the protection of the patentee, the encouragement of the genius of others and the assurance that the subject of the patent will be dedicated ultimately to the public.” [(General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 [37 USPQ 466] (1938)).] Nautilus, 110 USPQ2d at 1693 n. 6.

8. § 112(b) Enhances Patent Quality
Compliance with § 112(b) enhances patent quality, by providing clear notice to the public of the boundaries of the claimed invention
If a claim is unclear, raising and resolving § 112(b) issues in the written record will enhance patent quality by clarifying the prosecution history
For detailed information on how to evaluate claims for definiteness and on specific topics relating to § 112(b) see MPEP and 2173, in general
Enhancing the quality of patents:
Fosters innovation and competitiveness
Raises confidence in the patent process
Section 112(b) is a powerful tool to enhance patent quality. When used during examination, compliance with 112(b) enhances patent quality by providing clear notice to the public of the boundaries of the claimed invention. In particular, if a claim is unclear, raising and resolving § 112(b) issues in the written record will enhance patent quality by clarifying the prosecution history. As a result, the quality of issued patents is enhanced, which fosters innovation and competitiveness and raises confidence in the patent process.
As noted by the Federal Circuit in Phillips, courts should consider a patent's prosecution history, which is part of the ‘intrinsic evidence’ of a patent. “Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.” … “Furthermore, like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent … the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” [internal cites omitted] Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).
For detailed information about the standards for determining if a claim is definite, and on specific topics relating to § 112(b), examiners should refer to MPEP and 2173 in general.

9. The Role of Examiners
Examiners have a duty to enforce § 112(b) by requiring that claim language clearly defines the boundaries of the claim scope
When claim language has unclear boundaries, a rejection explaining why the claim is indefinite under § 112(b) is appropriate
Such a rejection shifts the burden of clarifying the boundaries of claimed protection to the applicant, who is best suited to explain what has been invented
Examiners play a critical role in developing the written record that is part of the prosecution history of an issued patent.
Moreover, Examiners have a duty to enforce § 112(b) by requiring that claim language clearly defines the boundaries of the claim scope. When claim language has unclear boundaries, a rejection explaining why the claim is indefinite under § 112(b) is appropriate. Such a rejection shifts the burden of clarifying the boundaries of claimed protection to the applicant, who is best suited to explain what has been invented.
In fact, courts and the PTAB will look, and sometimes quote or cite to examiner’s remarks, when construing a claim and determining validity of a patent. As an example, recently, the Federal Circuit stated “[w]e have recognized the importance of the role that the USPTO can play in ensuring that patent claims
are clear and unambiguous” noting in its written decision that “[t]he Board reviewed and agreed with the examiner’s identification of the indefiniteness problems that constituted [applicant’s] failure to adequately comply with the statutory requirements of § 112(b), and for which there had been no satisfactory response from [applicant].” In re Packard, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014).

10. The Role of Applicants
Applicants have a duty to comply with § 112(b) by ensuring that claim language clearly defines the boundaries of the claim scope sought
If claim language does not clearly define the boundaries of the claim scope, applicant has the opportunity and duty to clarify the claim boundaries during prosecution
Resolution prior to issuance helps prevent disputes as to claim meaning when the patent is enforced or reviewed, e.g., in litigation or post-grant proceedings
Applicants have an equally important role in clarifying the record. They are in the best position to explain what patent protection is being sought and what they consider as their invention.
Applicants have a duty to comply with § 112(b) by ensuring that claim language clearly defines the boundaries of the claim scope sought. If claim language does not clearly define the boundaries of the claim scope, applicant has the opportunity and duty to clarify the claim boundaries during prosecution. Resolution prior to issuance helps prevent disputes as to claim meaning when the patent is enforced or reviewed, e.g., in litigation or post-grant proceedings.

11. Making A § 112(b) Rejection
Examiner must identify the specific claim language that is indefinite, and explain why that language renders the boundaries of the claim unclear
Enough information must be provided to enable applicant to make a meaningful response
Provide an explanation regarding claim construction when needed to assist in clarifying position
Whenever practicable, the examiner should indicate how the issues may be resolved, e.g., by suggesting amendments to the claims that resolve the issues
When the examiner determines that the boundaries of a claim are not reasonably clear, a rejection under 112(b) should be made. In making a rejection, the Examiner must identify the specific claim language that is indefinite, and explain why that language renders the boundaries of the claim unclear. As required by 35 U.S.C. § 132, enough information must be provided to enable applicant to make a meaningful response. Additionally, an explanation regarding claim construction should be provided when needed to assist in clarifying the examiner’s position or to provide a context for the broadest reasonable interpretation that the examiner has given the claim. Further, whenever practicable, the examiner should indicate how the issues may be resolved, e.g., by suggesting amendments to the claims that resolve the issues.
By this, a rejection can better withstand later challenges at the PTAB or in court. A good example of this is In re Packard, in which the Federal Circuit upheld an examiner’s indefiniteness rejection noting 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 otherwise 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).” Packard, 110 USPQ2d at 1787.
Examiners should keep in mind that, under the principles of compact prosecution, each claim should be examined for compliance with every statutory requirement for patentability in the initial review of the application. Thus, when the examiner determines that a claim term or phrase renders the claim indefinite, the examiner should make a rejection based on indefiniteness under 35 U.S.C. 112(b), as well as any other applicable rejection. When making a rejection over prior art in these circumstances, it is important that the examiner state on the record how the claim term or phrase is being interpreted with respect to the prior art applied in the rejection.

12. Applicant’s Reply
In response to a rejection for indefiniteness, applicant can:
explain why the language is definite, and/or
amend the claim to resolve the indefiniteness
An interview may also assist in resolving issues of clarity and interpretation of claim scope
Applicant’s reply, along with the examiner’s written explanation or interview summary, will provide a clear record of how the claim boundaries were defined prior to issuance
Applicant can successfully reply in several ways to resolve an indefiniteness rejection. Applicant can explain why the language is definite, and/or amend the claim to resolve the indefiniteness. Applicant and the examiner may also hold an interview, which may assist in resolving issues of clarity and interpretation of claim scope. Applicant’s reply, along with the examiner’s written explanation or interview summary, will provide a clear record of how the claim boundaries were defined prior to issuance.

13. Responding to Applicant’s Reply
When applicant’s reply resolves the issue, it is a “best practice” to indicate on the record that the issue has been resolved and how it was resolved, if the record is not already clear
For example, if applicant argues that a certain term is definite and also amends the claim, indicate which action resolved the issue
If the next action is a notice of allowance, reasons for allowance can include such an indication
If the issue was resolved during an interview, indicate such on an interview summary record
Providing such an indication enhances the clarity of the prosecution record
The examiner must consider applicant’s reply to determine whether the issues of indefiniteness have been resolved. If the boundaries of the claim are still not reasonably clear, the rejection should be maintained and an explanation as to what issues remain provided to applicant.
When applicant’s reply resolves the issue, it is a “best practice” to indicate on the record that the issue has been resolved and how it was resolved, if the record is not already clear. For example, if applicant argues that a certain term is definite and also amends the claim, indicate which action resolved the issue. If the next action is a notice of allowance, reasons for allowance can include such an indication. If the issue was resolved during an interview, indicate such on an interview summary record.
Providing such an indication enhances the clarity of the prosecution record by providing a written history of the boundaries of the claim as understood by applicant and the examiner during prosecution.

14. Clarity Of The Prosecution Record
Clarity of the prosecution record is of utmost importance, because the record explains what deficiencies the examiner addressed, and how the applicant overcame them during prosecution
The prosecution record will provide a map for the public to understand the boundaries of the patent protection and provide clear notice of patent rights
The PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean
In the context of § 112(b), a clear record improves the clarity of claim limitations in a granted patent, by reflecting the mutual understanding of the scope and content of the claim reached by the examiner and the applicant
Clarity of the prosecution record is of utmost importance because the record explains what deficiencies the examiner addressed, and how the applicant overcame them during prosecution. The prosecution record will provide a map for the public to understand the boundaries of the patent protection and provide clear notice of patent rights. The PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean. In the context of § 112(b), a clear record improves the clarity of claim limitations in a granted patent by reflecting the mutual understanding of the scope and content of the claim reached by the examiner and the applicant.

15. Example 1
The following example analyzes a claim having functional language with an intended result, which was found indefinite by the Court of Appeals for the Federal Circuit.
In the analysis, among other factors, the court looked to the rejections made by the examiner and the responsive arguments by the applicant in determining whether the phrase at issue was indefinite.
This example highlights:
the reasons why an indefinite claim poses problems when the boundaries of coverage are unclear, and
the importance of the prosecution record in determining the boundaries of coverage after the patent issues.
Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005): U.S. Patent No. 6,014,137
Now, let’s turn to an example that shows the benefits of clarifying the record by raising and resolving indefinite claim issues. The following example analyzes a claim having functional language with an intended result, which was found indefinite by the Court of Appeals for the Federal Circuit. In the analysis, among other factors, the court looked to the rejections made by the examiner and the responsive arguments by the applicant in determining whether the phrase at issue was indefinite.
This example highlights: the reasons why an indefinite claim poses problems when the boundaries of coverage are unclear, and the importance of the prosecution record in determining the boundaries of coverage after the patent issues.
The example explains the case of Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005): U.S. Patent No. 6,014,137.

16. Refresher on Evaluating Functional Language Under § 112(b)
Consider the following to determine whether a claim limitation expressed in functional language is definite with clear scope/meaning:
Is there a clear indication of the scope of subject matter covered by the language, e.g., a specification definition or known meaning in the art?
Does the limitation have well defined boundaries?
Would one of ordinary skill in the relevant art know what structures/steps are covered by the limitation?
The above considerations are not all inclusive nor limiting
MPEP (g)
Training on examining functional language was provided in the spring of A CBT of that training is available on the Office website on the Examiner Guidance and Training Materials webpage under Claim Interpretation. As a refresher on evaluating functional language under § 112(b), it is important to consider the following to determine whether a claim limitation expressed in functional language is definite with clear scope/meaning.
Is there a clear indication of the scope of subject matter covered by the language, e.g., a specification definition or known meaning in the art?
Does the limitation have well defined boundaries?
Would one of ordinary skill in the relevant art know what structures/steps are covered by the limitation?
The above considerations are not all inclusive nor limiting. For more information on functional language see MPEP (g).

17. Reminder of Potential Patentability Issues with Functional Language
When the claim language imposes no limits on how a claimed function is performed in terms of structure, material or actions, a functional limitation can raise the following issues:
Indefiniteness under 112(b): Failure to provide a clear-cut indication of claim scope because the functional language is not sufficiently precise and definite resulting in no boundaries on the claim limitation
Lack of written description under 112(a): Failure to explain how the inventor envisioned the function to be performed such that the written description does not show that the inventor had possession of the claimed invention
Lack of enablement under 112(a): Failure to provide an enabling disclosure commensurate with the scope of the claims when the claim language covers all ways of performing a function
Application of prior art: Uncertainty as to the scope of the claim leading to broad application of prior art
When the claim language imposes no limits on how the claimed function is performed in terms of structure, material or actions, a functional limitation can raise the following patentability issues:
Indefiniteness under 112(b): Failure to provide a clear-cut indication of claim scope because the functional language is not sufficiently precise and definite resulting in no boundaries on the claim limitation.
Lack of written description under 112(a): Failure to explain how the inventor envisioned the function to be performed such that the written description does not show that the inventor had possession of the claimed invention.
Lack of enablement under 112(a): Failure to provide an enabling disclosure commensurate with the scope of the claims when the claim language covers all ways of performing a function.
Application of prior art: Uncertainty as to the scope of the claim leading to broad application of prior art.
It is noted that the examples in these slides focus on resolving the 112(b) issues. The other patentability issues are mentioned here to emphasize the importance of clarifying the scope of the claims on the record.
Prior training addressed functional claim terms with respect to 35 USC 112(a). For more information see Parts 1 and 2 of the 2015 training modules titled “Examining Claims for Compliance with 35 USC 112(a)” also on the Examination Guidance and Training Materials webpage.

18. Example 1: Electronic Kiosk Authoring System
The system author is given a limited range of pre-defined design choices for stylistic and functional elements appearing on the screens “[M]ajor aesthetic or functional design choices … as well as hierarchical methods of retrieving information may be built into the system [while] taking into account the considered opinions of aesthetic design specialists, database specialists, and academic studies on public access kiosk systems and user preferences and problems.”
Software that allows a person to customize user interfaces for individual electronic kiosks “quickly and easily within wide limits of variation, yet subject to constraints adhering the resulting interface to good standards of aesthetics and user friendliness.”
In this case, the invention was an electronic kiosk authoring system. The invention relates to software that allows a person to customize user interfaces for individual electronic kiosks “quickly and easily within wide limits of variation, yet subject to constraints adhering the resulting interface to good standards of aesthetics and user friendliness.” According the specification, the system author is given a limited range of pre-defined design choices for stylistic and functional elements appearing on the screens. “[M]ajor aesthetic or functional design choices … as well as hierarchical methods of retrieving information may be built into the system [while] taking into account the considered opinions of aesthetic design specialists, database specialists, and academic studies on public access kiosk systems and user preferences and problems.”

19. Highlights of Claim 1
In an electronic kiosk system … , a method for defining custom interface screens … comprising the steps of: providing a master database of information … to be displayed on any of said plurality of kiosks; providing a plurality of pre-defined interface screen element types, …, wherein each said element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system, …,
Claim 1 is reproduced in part on this slide. The following are highlights of the method recited in the claim, focusing on the phrase “aesthetically pleasing,” which was the phrase at issue in this case.
In an electronic kiosk system … , a method for defining custom interface screens … comprising the steps of:
providing a master database of information … to be displayed on any of said plurality of kiosks;
providing a plurality of pre-defined interface screen element types, …, wherein each said element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system, ….

20. Prosecution History Noted by the Court
The “aesthetically pleasing” claim language was not discussed by the inventor or the patent examiner during prosecution of Claim 1 in the application, which matured into the patent at issue
However, during prosecution of a continuation application that language was discussed
The patent examiner for the continuation rejected a similar claim as being indefinite for using the phrase “aesthetically pleasing”
In response, the inventor argued that the phrase is definite, but ultimately deleted it, stating in part that it is:
“not intended to identify qualities separate and apart from the remainder of this claim element” and is “superfluous and unnecessary”
As discussed in the opinion, during the proceedings the court looked to the prosecution history of the patent, including a related application, to determine whether the phrase “aesthetically pleasing” was at issue during examination. The “aesthetically pleasing” claim language was not discussed by the inventor or the patent examiner during prosecution of the application. However, during prosecution of a continuation application that same language was discussed. The court noted that the patent examiner for the continuation rejected a similar claim as being indefinite for using the phrase “aesthetically pleasing.” Applicant’s response in the continuation was also analyzed by the court. The prosecution revealed that in response to the rejection, the inventor argued that the phrase is definite, but ultimately deleted it, stating in part that it is:
“not intended to identify qualities separate and apart from the remainder of this claim element” and is “superfluous and unnecessary.”
[The continuation application to the ′137 patent eventually issued as United States Patent No. 6,460,040.]

21. Issue: Indefiniteness
Is the phrase “aesthetically pleasing” indefinite? It depends:
Can one of ordinary skill in the art determine whether an interface screen is “aesthetically pleasing”?
How is “aesthetically pleasing” measured?
What boundaries are imposed on the step of providing elements for the screen by this claim limitation?
The issue raised during this court proceeding was whether claim 1 should be invalidated for being indefinite due to the phrase that included the words “aesthetically pleasing”. It depends. The questions posed in making this determination included:
Can one of ordinary skill in the art determine whether an interface screen is “aesthetically pleasing”?
How is “aesthetically pleasing” measured?
What boundaries are imposed on the step of providing elements for the screen by this claim limitation?

22. Claim Interpretation
The court first looked at the plain meaning of “aesthetically pleasing” in the context of claim 1 and found that:
It relates to the look and feel of custom interface screens on kiosks, and
The aggregate layout of elements on an interface screen is an aspect of the interface screens that may be “aesthetically pleasing”
As in examination, the first step the court took was to interpret the claim to determine the boundaries of the patent coverage. The court first looked at the plain meaning of “aesthetically pleasing” in the context of claim 1 and found that it relates to the look and feel of custom interface screens on kiosks, and that the aggregate layout of elements on an interface screen is an aspect of the interface screens that may be “aesthetically pleasing.” They analyzed the entire claim, especially focusing on every occurrence of the phrase “aesthetically pleasing.”

23. Written Description
The court also looked at the written description of the patent at issue to determine whether the inventor explained how to provide elements that are “aesthetically pleasing”
Found examples of aesthetic features controlled by the authoring system (button styles and sizes, window borders, color combinations, and type fonts), but no explanation for what selections would be “aesthetically pleasing”
Written description provided no guidance to a person making aesthetic choices such that their choices would result in an “aesthetically pleasing” look and feel, other than to consult subjective opinions of aesthetic design specialists, database specialists, and academic studies
Unanswered questions included: How does one determine whether a color combination is “aesthetically pleasing”?
After looking at the claim language as a whole, the court turned to the specification to assist in determining the meaning of the claim terms. They looked at the written description to determine whether the inventor explained how to provide elements that are “aesthetically pleasing.” The specification included examples of aesthetic features controlled by the authoring system, such as button styles and sizes, window borders, color combinations, and type fonts. However, there was no explanation for what selections would be “aesthetically pleasing.” The written description noted that a user could consult subjective opinions of aesthetic design specialists, database specialists, and academic studies, but provided no further guidance. Thus, a person making aesthetic choices in accordance with this claim after reading the specification would have no instruction as to how to choose elements that would result in an “aesthetically pleasing” look and feel. The court noted that such a person would be left with unanswered questions, such as how does one determine whether a color combination is “aesthetically pleasing”?

24. Ascertain the Claim Boundaries
The plain meaning of the phrase helps identify the components that must be “aesthetically pleasing”
But no meaningful definition for the phrase is provided: it is a subjective standard
Merely understanding that “aesthetically pleasing” relates to the look and feel of interface screens, or to the aggregate layout of elements on interface screens, fails to provide one of ordinary skill in the art with any way to determine whether an interface screen is “aesthetically pleasing”
After interpreting the claim, the boundaries of the coverage sought by the claim must be ascertained. In this case, the plain meaning of the phrase helps identify the components that must be “aesthetically pleasing.” However, merely identifying the components does not provide a meaningful definition for the phrase. It is a subjective standard, not an objective standard that can be measured.
Merely understanding that “aesthetically pleasing” relates to the look and feel of interface screens, or to the aggregate layout of elements on interface screens, fails to provide one of ordinary skill in the art with any way to determine whether an interface screen is “aesthetically pleasing.”

25. Example: Indefiniteness Rejection
In this case, the boundaries imposed by this limitation are unknown because a person of ordinary skill in the art has no way to determine when the interface screen is aesthetically pleasing
wherein each said element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system
It would be proper to reject claim 1 under 112(b) by identifying the specific claim language that is unclear and explaining why it is indefinite
A rejection under 112(a) would also appear to be appropriate as the disclosure fails to describe how to provide elements that make the interface screen aesthetically pleasing
In this case, the boundaries imposed by this limitation are unknown because a person of ordinary skill in the art has no way to determine when the interface screen is aesthetically pleasing. The claim requires that in the step of “providing” elements, each element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for the interface screens on all kiosks of the kiosk system. As the limits of this claim feature are unknown, it would be proper to reject claim 1 under 112(b) by identifying the specific claim language that is unclear and explaining why it is indefinite.
It should be noted that a rejection under 112(a) would also appear to be appropriate as the disclosure fails to describe how to provide elements that make the interface screen aesthetically pleasing. Thus, there is no evidence that the inventor was in possession of the claimed invention at the time of filing.

26. Example: Sample Rejection
In this case, an examiner making a rejection should identify the phrase “aesthetically pleasing” and explain why it is indefinite, i.e., there is no objective measure for that result. For example, the explanation could state:
The meaning of the claim limitations that include the phrase “aesthetically pleasing” is unknown because after interpreting the claim in view of the specification one of ordinary skill in the art would not understand how to provide a plurality of pre-defined interface screen element types that conform with a desired uniform and aesthetically pleasing look and feel for the interface screens. No guidance is provided regarding which selections for the elements (such as button styles and sizes, window borders, color combinations, and type fonts) are “aesthetically pleasing.”
In this case, an examiner making a rejection should identify the phrase “aesthetically pleasing” and explain why it is indefinite, i.e., there is no objective measure for that result. For example, the explanation could state:
The meaning of the claim limitations that include the phrase “aesthetically pleasing” is unknown because after interpreting the claim in view of the specification one of ordinary skill in the art would not understand how to provide a plurality of pre-defined interface screen element types that conform with a desired uniform and aesthetically pleasing look and feel for the interface screens. No guidance is provided regarding which selections for the elements (such as button styles and sizes, window borders, color combinations, and type fonts) are “aesthetically pleasing.”

27. Example: Response to the Rejection
As noted, the examiner in the continuation did make an indefiniteness rejection of “aesthetically pleasing”
In response, the applicant deleted the phrase and presented various arguments, including:
[O]ne practicing the invention can create an “aesthetically pleasing look and feel” that is “desired” by that person and that is maintained as desired on screens of the system.
[T]he “aesthetically pleasing” language is not intended to identify qualities separate and apart from the remainder of this claim element. Accordingly, the deleted language is superfluous and unnecessary to the claims.
After making the rejection, the burden is shifted to the applicant to respond in a manner that resolves the issue, by amending the claim and/or providing arguments why the claim is definite.
As noted, the examiner in the continuation did make an indefiniteness rejection of “aesthetically pleasing.” In response, the applicant deleted the phrase and presented various arguments, including:
“[O]ne practicing the invention can create an “aesthetically pleasing look and feel” that is “desired” by that person and that is maintained as desired on screens of the system.”
“[T]he “aesthetically pleasing” language is not intended to identify qualities separate and apart from the remainder of this claim element. Accordingly, the deleted language is superfluous and unnecessary to the claims.”

28. Example: Considering Applicant’s Response
The court found that applicant’s arguments about that phrase in the continuation were not persuasive and in fact confirmed that the phrase is indefinite:
the phrase “aesthetically pleasing” fails to delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude
Thus, due to the “aesthetically pleasing” language in the functional wherein clause of claim 1, the court found the claim indefinite and thus invalid
The continuation application did not suffer from the same deficiency since the phrase was deleted in response to the 112(b) rejection
The examiner would then need to consider applicant’s response to determine whether the issue has been resolved. In the continuation application in this case, deletion of the phrase overcame the rejection of the claim.
In the litigation, the court looked to the arguments presented with the amendment to the claim. They found that applicant’s arguments about that phrase in the continuation were not persuasive and in fact confirmed that the phrase is indefinite. The court emphasized that the phrase “aesthetically pleasing” fails to delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude. This refers to the notice function of claims – a patent claim must notify the public of the boundaries of coverage. When the boundaries of patent rights are clear, infringement can be avoided and innovation in areas falling outside those boundaries is promoted.
Thus, due to the “aesthetically pleasing” language in the functional wherein clause of claim 1, the court found the claim indefinite and thus invalid. The continuation application did not suffer from the same deficiency since the phrase was deleted in response to the 112(b) rejection.

29. Example: Benefit of the Record
In the patent at issue in this exemplary case, the inability to understand the boundaries of the “aesthetically pleasing” language led to invalidation of the patent claim
In contrast, in the continuation application, the examiner raised the issue of indefiniteness by making the rejection and pointing out that the phrase was unclear thus resolving the issue prior to issuance
The written record revealing the back and forth between the examiner and the applicant on this issue was then used by the court when the patent was challenged in court
In the patent at issue in this exemplary case, the inability to understand the boundaries of the “aesthetically pleasing” language led to invalidation of the patent claim. In contrast, in the continuation application, the examiner raised the issue of indefiniteness by making the rejection and pointing out that the phrase was unclear, thus resolving the issue prior to issuance of the patent. The written record revealing the back and forth between the examiner and the applicant on this issue was then used by the court when the patent was challenged in court. This case shows one way that the written record is used after a patent issues. It also shows the importance of resolving indefiniteness issues before allowance and thus avoiding later invalidation.

30. Example: Best Practice Take-Aways
When a claim limitation is unclear, a rejection under 112(b) should be made with specific reasons explaining what words are unclear and why
The burden is then shifted to the applicant to respond and resolve the issue
As seen in the continuation application in this exemplary case, the examiner identified the indefinite language, the amendment resolved the issue, and applicant had the opportunity to explain the meaning of the limitation
The court was able to review the written record and use the inventor’s interpretation of the claim in making their determination regarding validity
As shown by this example, when a claim limitation is unclear, a rejection under 112(b) should be made with specific reasons explaining what words are unclear and why. The burden is then shifted to the applicant to respond and resolve the issue. As seen in the continuation application in this exemplary case, the examiner identified the indefinite language, the amendment resolved the issue, and applicant had the opportunity to explain the meaning of the limitation. The court was able to review the written record and use the inventor’s interpretation of the claim in making their determination regarding validity.

31. Discussion Example 2 Clare v. Chrysler Group LLC (Fed. Cir. 2016)
Example of a claim with functional language that provides a patentable distinction to the claim
The Federal Circuit looked at the prosecution history, including the 112(b) rejections made by the examiner and the arguments made by the applicant, to determine the meaning of the functional language and whether it provided a patentable distinction to the claim
Decision was on March 31, 2016
The following example discusses a claim having functional language that provides a patentable distinction to the claim, which was recently interpreted by the Court of Appeals for the Federal Circuit.
In making its claim interpretation, among other factors, the court looked to the prosecution history, and particularly the rejections made by the examiner and the responsive arguments by the applicant in determining the meaning of the phrase at issue and whether it provided a patentable distinction to the claim.
This example highlights:
how the interpretation of functional language affects patentability (and infringement) evaluations, and
the importance of the prosecution record in determining the boundaries of coverage after the patent issues.

32. Example 2: Pickup Truck Storage Box
Side panel 15 extends from cut line 20 to cut line 21, and is hinged to provide access to the storage box 23. The hinges are located on the interior of the bed 12 and not visible from the exterior.
As shown in the three figures reproduced on this slide, the side panel 15 extends from cut line 20 to cut line 21, and is hinged to provide access to the storage box 23. The hinges are located on the interior of the bed 12 and not visible from the exterior.
[took off slides] When interpreting the claim, the court gave weight to the functional limitation and construed it to mean that the hinged portion is constructed such that the storage compartment 23 is not visually obvious to an observer from the outward appearance of the pickup truck.

33. Highlights of Claim 46 A pickup truck having: a cab;
a bed with two side panels connected to the cab and mounted on a frame the improvement comprising:
a storage compartment mounted within the bed and adjacent to one of the wheel wells; and
at least a portion of one of the side panels is hinged to provide access to at least a portion of the storage compartment wherein the side panels terminate adjacent to the frame . . .
wherein the hinged portion is constructed such that the truck has an external appearance of a conventional pickup truck.
Claim 46 of the 6,499,795 and claim 1 of 7,104,583 are representative claims.
The claim from the patent at issue in Clare v. Chrysler Group is reproduced in part on this slide. The following are highlights of the claim, focusing on the functional language in the wherein clause that was at issue in this case.
A pickup truck having: a cab; a bed with two side panels connected to the cab and mounted on a frame the improvement comprising:
a storage compartment mounted within the bed and adjacent to one of the wheel wells; and
at least a portion of one of the side panels is hinged to provide access to at least a portion of the storage compartment wherein the side panels terminate adjacent to the frame . . .
wherein the hinged portion is constructed such that the truck has an external appearance of a conventional pickup truck.
Note that the claim includes several instances of functional language, which is typical in most claims and generally raises no issues provided the boundaries of the claim limitations are clear. In this case, however, the highlighted limitation relating to the construction of the hinged portion raised issues of indefiniteness as discussed in the following slides.

34. Prosecution History 112(b) rejection Applicant’s response
During prosecution, the examiner rejected claims with the “external appearance” limitation as indefinite because the cut lines for the storage box make the claimed pickup visibly distinct from a conventional pickup.
Applicant’s response
The applicant overcame the rejection by persuasively arguing on the record that the ordinary interpretation of the external appearance limitation is that the outward aspects of the claimed pickup are like the outward aspects of a pickup without a storage box.
The issue raised in the court proceedings was whether Chrysler infringed the claim. This issue turned on whether Chrysler’s pickup trucks satisfied the functional language of the claim by constructing the hinged portion of its trucks such that the truck has an external appearance of a conventional pickup truck.
As discussed in the court’s opinion, during prosecution the examiner had rejected claims with the “external appearance” limitation as indefinite because the cut lines for the storage box make the claimed pickup visibly distinct from a conventional pickup. The applicant overcame the rejection by arguing on the record that the ordinary interpretation of the external appearance limitation is that the outward aspects of the claimed pickup are like the outward aspects of a pickup without a storage box.

35. Court Proceedings
The court looked to the remarks by the examiner and applicant when interpreting the meaning of the limitation finding that the interior hinges are not obviously visible from the exterior outward appearance.
As a result, no infringement was found because the hinged portion of the storage compartment was obvious from the outward appearance of the accused pickup.
The court looked to the remarks by the examiner and applicant in the prosecution history when interpreting the meaning of the limitation, and relied on those remarks in finding that the interior hinges are not obviously visible from the exterior outward appearance.
As a result, no infringement was found because the hinged portion of the storage compartment in Chrysler’s pickup trucks was obvious from the outward appearance of the accused pickup and therefore did not satisfy the functional language in the claim.

36. What Would Have Happened If The Functional Limitations Had Been Ignored During Examination?
Unclear Claim Boundaries: The indefiniteness rejection would not have been made.
Impacts
Courts and the PTAB
Potential Licensees
Competitors and Innovators
In addition, if the examiner had ignored the functional limitations during examination, the indefiniteness rejection would not have been made and the unclear boundaries of the functional language would not have been clarified during prosecution.
This could have had the following negative effects:
No clarifying remarks by the applicant or examiner would have been available in the prosecution record to courts or the PTAB regarding the meaning of “outward appearance,” which turned out to be critical to the infringement action in court
If the application had been appealed to the PTAB, a rejection may not have been upheld if there was confusion over the meaning of “outward appearance”
Potential licensees may not understand the boundaries of protection or limits on the claim, thus diminishing the value of the patent
Competitors and innovators may not understand the boundaries of protection or limits on the claim, thus discouraging innovation in the field

37. Benefits Of The Clear Record
The court was able to rely on the prosecution record, because it clearly explained what deficiencies the examiner addressed, and how the applicant overcame them during prosecution
The court proceeding we have discussed illustrates the importance of a clear prosecution record. As shown on the preceding slides, the court here was able to rely on the prosecution record, because it clearly explained what deficiencies the examiner addressed, and how the applicant overcame them during prosecution.
In the context of § 112(b), the clear prosecution record improved the clarity of the outward appearance limitation, by reflecting the mutual understanding of the scope and content of the claim reached by the examiner and the applicant.
The detailed and informative discussion in the record about the interpretation and definiteness of the outward appearance limitation benefitted the court, the patentee, and the public, e.g., by clearly setting forth the protection afforded the applicant, and providing public notice as to how the claim was interpreted during examination.
In addition, the examiner followed the “best practice” of clearly indicating on the record how the § 112(b) rejection was overcome, e.g., by indicating in the notice of allowance that the § 112(b) rejection was overcome by applicant’s arguments. Providing this indication enhanced the clarity of the prosecution record by providing a written history of the boundaries of the claim as understood by applicant and the examiner during prosecution.

38. Summary
Ensuring that the boundaries of the claimed invention are clear to one of ordinary skill in the art enhances patent quality and clarity
Establishing a clear written prosecution record of how the claim boundaries were defined prior to issuance depends on both examiners and applicants
Clarifying the record establishes a foundation for claim interpretation throughout prosecution and the life of the patent, which benefits the examiner, the applicant, and the public
In summary, Examiners should now be aware that 35 USC 112(b) is a powerful tool for clarifying the boundaries of claims and in enhancing the prosecution record.
Examiners should take away three lessons from these slides:
Ensuring that the boundaries of the claimed invention are clear to one of ordinary skill in the art enhances patent quality and clarity;
Establishing a clear written prosecution record of how the claim boundaries were defined prior to issuance depends on both examiners and applicants; and
Clarifying the record establishes a foundation for claim interpretation throughout prosecution and the life of the patent, which benefits the examiner, the applicant, and the public.

39. Resources
For more information about the requirements of § 112(b), and its application to different types of claim language, see:
MPEP 2173 et seq.
Prior training materials available at:
policy/examination-guidance-and-training-materials
For more information about the requirements of § 112(b), and its application to different types of claim language, see:
MPEP 2173 et seq.
Prior training at Examination Guidance and Training Materials webpage, including:
Claim Interpretation: Functional Language and Broadest Reasonable Interpretation modules
35 U.S.C. 112(f): Broadest Reasonable Interpretation and Definiteness of § 112(f) Limitations module
2011 § 112 Guidelines training slides and examples

40. Office of Patent Legal Administration, USPTO
Contact Information:
Carolyn B. Kosowski
Office of Patent Legal Administration, USPTO
(571)