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ARTICLE · 05 DECEMBER 2016

Ex Parte Miyazaki : Claims Are Indefinite When ‘Amenable To Two Or More Plausible' Constructions

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The main issue on appeal related to claims rejected by the Examiner on novelty and obviousness grounds.

United StatesIntellectual Property
Adriana Burgy
Adriana Burgy
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PTAB Decision

Ex parte Miyazaki, Appeal 2007-3300 (November 19, 2008)

Background

The main issue on appeal related to claims rejected by the Examiner on novelty and obviousness grounds.  The Board did not reach the merits of these rejections, but instead entered new grounds of rejection for indefiniteness and lack of enablement.  The technology involved a large printer that uses roll paper; the claims recited: "a sheet feeding area operable to feed at least one roll of paper, at least one sheet of paper and at least one stiff carton toward a printing unit."  The Board concluded that, read in light of the specification, "a sheet feeding area" could have two plausible definitions (the area into which the paper is rolled or the area where the paper rests for feeding), neither of which was consistent with the other claims.

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