The Software IP Report

Learning from a Finding of Indefiniteness at the Patent Trial and Appeal Board

A recent decision from the Patent Trial and Appeal Board (PTAB) provides a lesson in avoiding indefiniteness under 35 U.S.C. § 112(b). In In re Hyde, Appeal 2013-003305, Application 12/387,151 (PTAB Nov. 4, 2015), the Applicant appealed prior art rejections under 35 U.S.C. §§ 102(b) and 103 only to have these grounds of rejection mooted by a new ground of rejection.

The sole independent claim at issue recited as follows:

71.  A system, comprising:

an accepter module configured to accept an indication of an individual’s compliance with an artificial sensory experience; and

a presenter module configured to present an indication of an inhalation device dispensed bioactive agent at least partially based on the indication of the individual’s compliance with the artificial sensory experience.

The PTAB explained that it had to understand the claim before it could analyze the Examiner’s prior art rejections. Here, the Specification gave examples of “artificial sensory experiences (taste, smell, hearing, touch, sight, etc.), and talked about how they would be included in the disclosed system, but “provide[d] no objective definition for identifying an ‘artificial sensory experience’ or any objective standard for determining which experiences are ‘artificial sensory experiences’ and which are not.”

The lesson: when drafting a patent application, define any term that is not a term of art. Examples are always a good idea, but should be accompanied by a definition that could be used by one skilled in the art to know when a claim is infringed.