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ARTICLE · 09 OCTOBER 2017

PTO Uses Different Approaches "Configured" To Assess Indefiniteness

McDermott Will & Emery
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In a precedential decision, the PTAB upheld the longstanding US PTO practice of using a lower threshold to assess claim indefiniteness during prosecution relative to the Nautilus standard applied by courts.

United StatesIntellectual Property
Danny Mansour
Danny Mansour
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In a precedential decision, the Patent Trial and Appeal Board (PTAB) upheld the longstanding US Patent and Trademark Office (PTO) practice of using a lower threshold to assess claim indefiniteness during prosecution relative to the Nautilus standard applied by courts. Ex parte McAward, Appeal No. 2015-006416 (PTAB, Aug. 25, 2017) (Horner, APJ) (precedential).

The appellant sought review of the Examiner's rejection of claims as indefinite under 35 USC § 112, second paragraph, and as unpatentable under 35 USC § 103(a), based on a "configured to" limitation in the claims. The PTAB has designated the portion of the decision directed to the analysis of the rejection under § 112 as precedential.

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