August 21, 2017

A Foolish Consistency may be the Hobgoblin of Little Minds, but it is the Hallmark of a Successful Applicant/Patent Owner

In In re Walter, [2016-2256] (August 21, 2017), the Federal Circuit affirmed the PTAB’s decision in ex parte reexamination of U.S. Patent No. 7,513,711 that all twelve claims of the patent lack adequate written description and are indefinite under 35 U.S.C. § 112.

While the opinion is non-precedential, it still has a simple, but valuable lesson for applicants and patent owners.  During the reexamination Walter amended the claims (directed to artificial reefs for cultivating marine life) to require a “support structure” that was “block-like.”  The Examiner found this use of “block-like indefinite because Walter’s proposed construction conflicted with the dictionary meaning of the term “block.”  During the appeal to the PTAB and during the appeal to the Federal Circuit, Walter alternated between two different meanings of the claim term “block-like,” and therein is the lesson of the case: if the applicant/patent owner can’t decide what a claim term means, then it is hard for the Board or a court to conclude that the term is sufficiently definite.

No one can say whether one of the possible constructions would have satisfied 35 USC §112, but presenting two possible constructions certainly does not.