United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE THOMAS G. PACKARD

______________________ 

2013-1204

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Serial No. 

12/004,324.

______________________ 

Decided: May 6, 2014

______________________ 

LOUIS W. TOMPROS, Wilmer Cutler Pickering Hale and 

Dorr, LLP, of Boston, Massachusetts, argued for appellant. With him on the brief were PROSHANTO MUKHERJI 

and CAITLIN R. LOOBY. 

NATHAN K. KELLEY, Deputy General Counsel for Intellectual Property Law and Solicitor, United States Patent 

and Trademark Office, of Alexandria, Virginia, argued for 

appellee. With him on the brief were KRISTI L. R. SAWERT

and STACY B. MARGOLIES, Associate Solicitors. Of counsel 

was WILLIAM LAMARCA, Attorney, United States Patent 

and Trademark Office, of Alexandria, Virginia. 

______________________ 
2 IN RE PACKARD

Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.

Concurring opinion filed by Circuit Judge PLAGER. 

PER CURIAM. 

This case raises an important question: what standard for indefiniteness should the U.S. Patent and Trademark Office (“USPTO”) apply to pre-issuance claims? The 

parties point to no case in which we previously have 

addressed this question. 

The Patent Trial and Appeal Board (“Board”) held Mr. 

Packard’s applied-for patent claims indefinite, and therefore not in compliance with the statutory drafting requirements of 35 U.S.C. § 112(b), which provide that the 

specification conclude with “one or more claims particularly pointing out and distinctly claiming” the subject 

matter of the invention.1 Mr. Packard, on appeal to this 

court, insists that the Board misapplied the standard of 

indefiniteness by finding his claims indefinite on grounds 

that they “contain[ ] words or phrases whose meaning is 

unclear.” J.A. 14. He believes that, had the Board applied an “insolubly ambiguous” standard to his claims, 

those claims would not have been held indefinite.

For the reasons we shall explain, we affirm the 

Board’s rejection of Mr. Packard’s claims. 

1 The patent in this case was filed prior to the September 16, 2012 effective date of § 4(c) of the Leahy-Smith 

America Invents Act (“AIA”), Pub. L. No. 112-29, which

replaces paragraph 2 of 35 U.S.C. § 112 with newly designated § 112(b). For the benefit of current readers, we 

have adopted the current designation as the text in relevant part is unchanged. 

 
IN RE PACKARD 3

BACKGROUND

The application in this appeal covers a coin change 

holder. J.A. 24. The coin holder is a thin plastic card that 

has four different channels on its front surface for storing 

different types of coins, as shown in the patent figures 

reproduced below. J.A. 24.

Figure 1 shows a frontal view of the card and Figure 2

shows a cross-section of the card. J.A. 37.

The examiner rejected Mr. Packard’s original application on three grounds: lack of adequate written description, claim indefiniteness, and obviousness. J.A. 145-47. 

Following this rejection, Mr. Packard cancelled all of his 

original claims and substituted a new set of claims numbered 28 through 37. J.A. 95-99. 

Claims 28 through 37 are at issue in this appeal, of 

which claims 28, 29 and 34 are representative:
4 IN RE PACKARD

28. I claim a small, thin, flat plane, rectangular 

change holding card and wallet/billfold or purse 

construction with the front top side of the card 

comprising three raised, straight, parallel, double 

flanged separators and two raised, straight, parallel, double flanged side edges and a raised side 

edge end thereby forming four parallel, side by 

side, flanged coin holding channels or rows of the 

same length and of different widths, one for quarters, one for dimes, one for nickels, and one for 

pennies, that are similarly blocked at one side 

edge by the raised side end edge with the other 

side of the channel/rows open except for small, 

fixed, flexible, partially moveable, rubber or plastic retainers that are attached to the topside and 

ends of the double flanged separators such that 

coins can be retained on the card and yet slide 

freely above the surface of the card and obliquely 

overlap as necessary within the channel/rows between the separators while the bottom, back side 

of the card is constructed with a wallet, billfold or 

purse extending from it.

29. The change holding card wallet, billfold, purse 

of claim 28, wherein the change holding card is 

constructed as part of the wallet, billfold, or purse 

and affixed to a surface and contained within the 

wallet, billfold or purse.

34. I claim a small thin uniformly flat plane rectangular coin holding card [c]omprising side edge 

retainers, a closed side retainer, small inclined/sloped end protrusions, multiple raised 

parallel, straight and double flanged channel/row 

separators, small flexible protruding retainers on 

the top side ends of the channel/row separators, 

all of which are arranged on the upper surface of 

the card such that a various denomination of coins 

can be held and retained on the card within a re-
IN RE PACKARD 5

spective channel/row and can slide freely within 

the double flanges and slightly above the flat surface of the card and can also be stored obliquely 

partially overlapping.

J.A. 95-98.

The examiner, in his final rejection, again found the 

pending claims invalid on the same three grounds: claims 

28-33 and 37 for lack of written description, claims 28-37 

for indefiniteness, and claims 28-37 for obviousness. J.A. 

108-14. Regarding written description, the examiner 

noted that, while the claims required the change holding 

card to be attached to a wallet, this feature was not 

supported by the written description. J.A. 109. Regarding indefiniteness, the examiner pointed out that several 

claim limitations failed to meet the requirements of 35 

U.S.C. § 112(b) because they lacked an antecedent basis 

or were otherwise unclear. J.A. 109-10.

Mr. Packard appealed the examiner’s final rejection to 

the Board, which affirmed the examiner’s written description and indefiniteness rejections, while reversing the 

obviousness rejection. J.A. 7-19. In the course of affirming the examiner’s indefiniteness rejection, the Board 

applied the review standard set forth in the Manual of 

Patent Examining Procedure (“MPEP”) § 2173.05(e), 

namely, “[a] claim is indefinite when it contains words or 

phrases whose meaning is unclear.” J.A. 14. On rehearing, the Board declined to modify its decision. J.A. 2-5. 

Mr. Packard appeals the Board’s decision. In its response to Mr. Packard’s opening brief on appeal, the 

USPTO focused on the indefiniteness issue, noting that, if 

we affirm the Board on that issue, which applies to all the 

claims, the adequacy of the written description, applicable 

to only some of the claims, becomes a moot issue. We 

accept the USPTO’s suggestion that we address first the 

claim indefiniteness issue because it relates to all of the 
6 IN RE PACKARD

claims and it necessarily implicates the question of the 

content of the written description. 

Actions of the USPTO are reviewed by us in accordance with the requirements of the Administrative Procedure Act. 5 U.S.C. § 701 et seq.; see Kappos v. Hyatt, 132 

S. Ct. 1690, 1694 (2012) (citing Dickinson v. Zurko, 527 

U.S. 150, 152 (1999)). Questions of law, as interpreted 

and applied by the agency, are given plenary review on 

appeal. Capon v. Eshhar, 418 F.3d 1349, 1351 (Fed. Cir. 

2005). Indefiniteness, as a subset of claim construction, is 

a question of law which this court reviews without deference. Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc., 

554 F.3d 1010, 1022 (Fed. Cir. 2009).

We have jurisdiction over this appeal pursuant to 28 

U.S.C. § 1295(a). 

DISCUSSION

1.

Petitioner Packard casts his appeal on broad grounds. 

First, he contends that the standard applied by this court 

for determining indefiniteness of a term in a claim under

35 U.S.C. § 112(b) is governed by the phrase “insolubly 

ambiguous.” Under this standard, he tells us, a claim is 

not indefinite if a court can give any meaning to the 

disputed term in the context of the claim. 

Second, Mr. Packard contends that the “insolubly ambiguous” standard of this court for indefiniteness is mandated not only for our use in deciding cases in which the 

patent has already issued and is being challenged (“postissuance cases”), but also for cases in which no patent has 

yet issued and in which the applied-for claims are being 

evaluated by the USPTO (“pre-issuance cases”). He states

that this standard is more favorable to his case than the 

standard applied to his claims by the USPTO. 
IN RE PACKARD 7

For the reasons we shall explain, we believe that the 

case before us can be resolved without addressing the 

broad issues raised by Mr. Packard. We conclude 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). The satisfactory response by the applicant can 

take the form of a modification of the language identified 

as unclear, a separate definition of the unclear language, 

or, in an appropriate case, a persuasive explanation for 

the record of why the language at issue is not actually 

unclear. On the facts before us, this holding suffices to 

uphold the rejection that occurred here. 

2.

The grounds for this holding derive from a combination of the USPTO’s examination function under 35 

U.S.C. § 131 et seq. and the substantive standard of 35 

U.S.C. § 112(b). Congress assigned to the USPTO the 

responsibility to examine applications to ensure compliance with the statutory criteria for issuance of a patent. 

35 U.S.C. § 131. In the USPTO, an applicant’s “claim is, 

or is supposed to be, examined, scrutinized, limited, and 

made to conform to what he is entitled to.” Keystone 

Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278 (1877). 

Congress also provided for examination to be an interactive process, which it commonly is. One or more 

rejections or objections by an examiner based on identified problems are followed by one or more responses from 

the applicant that address the identified problems, 

whether by revising claims or by furnishing information 

and explanation that shows why the initially perceived 

problems are not problems after all. 35 U.S.C. § 132; see 
8 IN RE PACKARD

also id. §§ 133, 134. The examination system regularly 

involves substantive interaction with applicants, relying 

on their distinctive incentives and abilities to enhance 

understanding and to help the USPTO ensure compliance 

with statutory standards.2 

The USPTO must be able to make the congressionally 

created examination process work so that it fulfills its 

purpose of producing patents whose claims meet the 

statutory standards. We earlier approved a procedural 

mechanism for the USPTO to use in doing this, which we 

refer to as the “prima facie case.” See In re Piasecki, 745 

F.2d 1468 (Fed. Cir. 1984). “In the prosecution of a patent, the initial burden falls on the PTO [examiner] to set 

forth the basis for any rejection.” Hyatt v. Dudas, 492 

F.3d 1365, 1369-70 (Fed. Cir. 2007). The USPTO thus 

meets its obligation to explain adequately the shortcomings it perceives so that the applicant is properly notified 

and able to respond. “Once the applicant is so notified, 

the burden shifts to the applicant to rebut the prima facie 

case with evidence and/or argument.” Id. 

The “prima facie case” determination is a purely procedural device that operates at the examiner level to 

clarify how the interaction process proceeds. Thereafter 

any final rejection by the examiner, and any review of the 

rejection, whether by the Board or through appeal to the 

2 See, e.g., Star Fruits S.N.C. v. United States, 393 

F.3d 1277, 1284 (Fed. Cir. 2005) (upholding examiner 

demand, under 37 C.F.R. § 1.105, for “information that 

the applicant is in the best position to most cheaply 

provide”); see also, USPTO, Notice of Public Hearing and 

Request for Comments on Issues Related to the Identification of Prior Art During the Examination of a Patent 

Application, 64 Fed. Reg. 28803, 28805 (1999) (stressing 

that “inventors are generally in the best position to be 

aware of the state of the art”).

 
IN RE PACKARD 9

courts, turns on the substantive question of the merits of 

the rejection. In re Piasecki, 745 F.2d at 1472 (citing In re 

Rinehart, 531 F.2d 1048, 1052 (CCPA 1976) (“When 

prima facie obviousness is established and evidence is 

submitted in rebuttal, the decision-maker must start over

. . . . An earlier decision should not, as it was here, be 

considered as set in concrete, and applicant’s rebuttal 

evidence then be evaluated only on its knockdown ability

. . . . [A] final finding of obviousness may of course be 

reached, but such finding will rest upon evaluation of all 

facts in evidence, uninfluenced by any earlier conclusion 

reached . . . .”)); see also In re Jung, 637 F.3d 1356, 1362 

(Fed. Cir. 2011).

The same approach to making the examination process work is an appropriate one for addressing the question of indefiniteness. We have elsewhere noted that 

indefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an 

issued patent. See Exxon Research & Eng’g v. United 

States, 265 F.3d 1370, 1380 (Fed. Cir. 2001). It makes 

good sense, for definiteness and clarity as for other validity requirements, for the USPTO initially to reject claims

based on a well-founded prima facie case of lack of clarity 

(in its several forms) based on the perspective of one of 

ordinary skill in the art in view of the entire written 

description and developing prosecution history. Then, if 

the applicant does not adequately respond to that prima 

facie case, to confirm that rejection on the substantive 

basis of having failed to meet the requirements of 

§ 112(b). Furthermore, we can reach that conclusion and 

decide the present case without regard to the proper 

formulation of the judicially-applied indefiniteness standard that may be appropriate for post-issuance assessment 

of indefiniteness, a matter currently under review by the 

Supreme Court. See Nautilus, Inc. v. Biosig Instruments, 

Inc., 715 F.3d 891 (Fed. Cir. 2013), cert. granted, 82 

U.S.L.W. 3195 (U.S. Jan. 10, 2014) (No. 13-369).
10 IN RE PACKARD

As the statutory language of “particular[ity]” and “distinct[ness]” indicates, claims are required to be cast in 

clear—as opposed to ambiguous, vague, indefinite—

terms. It is the claims that notify the public of what is 

within the protections of the patent, and what is not. See, 

e.g., Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876); 

United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 

236 (1942). 

At the same time, this requirement is not a demand 

for unreasonable precision. The requirement, applied to 

the real world of modern technology, does not contemplate 

in every case a verbal precision of the kind found in 

mathematics. Nor could it do so in a patent system that 

actually works, in practice, to provide effective protection 

for modern-day inventions. Rather, how much clarity is 

required necessarily invokes some standard of reasonable

precision in the use of language in the context of the 

circumstances. See Georgia-Pacific Corp. v. U.S. Plywood 

Corp., 258 F.2d 124, 136 (2d Cir. 1958) (“[P]atentable 

inventions cannot always be described in terms of exact 

measurements, symbols and formulae, and the applicant 

necessarily must use the meager tools provided by language, tools which admittedly lack exactitude and precision. If the claims, read in the light of the specifications, 

reasonably apprise those skilled in the art both of the 

utilization and scope of the invention, and if the language 

is as precise as the subject matter permits, the courts can 

demand no more.”). 

The USPTO, in examining an application, is obliged to 

test the claims for reasonable precision according to these 

principles. We have recognized the importance of the role 

that the USPTO can play in ensuring that patent claims 

are clear and unambiguous. For example, in In re Zletz, 

893 F.2d 319, 321-22 (Fed. Cir. 1989), a patent interference case, the court said:
IN RE PACKARD 11

during patent prosecution [ ] claims can be 

amended, ambiguities should be recognized, scope 

and breadth of language explored, and clarification imposed. . . . An essential purpose of patent 

examination is to fashion claims that are precise, 

clear, correct, and unambiguous. Only in this way 

can uncertainties of claim scope be removed, as 

much as possible, during the administrative process.

Recently, in Halliburton Energy Servs., Inc. v. M-I 

LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (affirming the 

district court’s finding that the term “fragile gel” was 

indefinite), the court said:

We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, 

and it is highly desirable that patent examiners 

demand that applicants do so in appropriate circumstances so that the patent can be amended 

during prosecution rather than attempting to resolve the ambiguity in litigation. 

3.

Given the role of the applicant in the process, it is a 

reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO, upon providing the applicant a well-grounded identification of clarity 

problems, to demand persuasive responses on pain of 

rejection. That approach decides this case, because Mr. 

Packard did not offer a satisfactory response to wellgrounded indefiniteness rejections in this case. The 

examiner here, having ample grounds, set forth a variety 

of ways in which he found the claims imprecise or confusing, sometimes not even understandable, considering 

them in light of the written description. See J.A. 109-12 

(June 2010); J.A. 146-47 (Feb. 2011); J.A. 172-73 (July 

2011); J.A. 228 (Feb. 2012); see also the more detailed 

factual discussion in Judge Plager’s concurring opinion. 
12 IN RE PACKARD

Mr. Packard did not respond adequately to this group 

of claim language problems. He ignored some entirely. 

As to others, he offered brief explanations of what he 

thought certain material in the written description and 

figures showed. But he did not focus on the claimlanguage difficulties, nor did he propose clarifying changes or show why, on close scrutiny, the existing claim 

language really was as reasonably precise as the circumstances permitted. See J.A. 126 (Nov. 2010); J.A. 151 

(May 2011); J.A. 190-193 (Nov. 2011); J.A. 244 (Sept. 

2012). 

The Board relied on this failure of response to the examiner’s well-grounded rejections in affirming on the 

merits the examiner’s final rejection. The Board reviewed 

and agreed with the examiner’s identification of the 

indefiniteness problems that constituted Mr. Packard’s 

failure to adequately comply with the statutory requirements of § 112(b), and for which there had been no satisfactory response from Mr. Packard. J.A. 14-16. On 

reconsideration, the Board stood by its affirmance of the 

rejection, noting the crucial distinction between what Mr. 

Packard argued and what is required to address an indefiniteness problem: Mr. Packard’s “arguments focus on 

what is contained in the disclosure, whereas the indefiniteness to which [§ 112(b)] is applied is in the language 

of the claims.” J.A. 5. 

In some cases it is difficult enough for courts to construe claims when the draftsperson has made every effort 

to be clear and concise, let alone when the claims have 

readily observable ambiguities or incoherencies within 

them. Because Mr. Packard had an opportunity to bring 

clarity to his claim language, we affirm the Board’s findings as to indefiniteness under the MPEP standard 

properly applied by the USPTO, the standard which we 

have here approved.
IN RE PACKARD 13

In view of our judgment upholding the Board’s determination that the applied-for patent claims are invalid for 

failure to comply with the requirements of § 112(b), the 

requirement that a claim “particularly point[ ] out and 

distinctly claim[ ] the subject matter . . . ,” we need not 

address the further issue of the problems with the written 

description under § 112(a).3

CONCLUSION

We affirm the Board’s decision on indefiniteness and 

approve the Board’s application of the standard on which 

it is based.

AFFIRMED

3 Similar to paragraph 2, paragraph 1 of 35 U.S.C. 

§ 112 was replaced with newly designated § 112(a) by 

§ 4(c) of the AIA; as explained previously, we have adopted the current designators.

 
United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE THOMAS G. PACKARD

______________________ 

2013-1204

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Serial No. 

12/004,324.

______________________ 

PLAGER, Circuit Judge, concurring. 

I join the per curiam opinion of the court, and fully 

support the conclusion stated therein. While the per 

curiam opinion reaches the right result and, as far as it 

goes, for the right reasons, it decides the case on grounds 

not argued by either party. 

I write separately because I am of the view that a petitioner to this court seeking reversal of a decision is 

entitled to an explanation of why the arguments on which 

he relied for his appeal did not prevail. I also believe that 

the significant issues raised by Mr. Packard deserve to be 

addressed directly. 

As the per curiam opinion explained, the Board, applying its understanding of the USPTO standard for 

clarity in claim drafting contained in the MPEP, held Mr. 

Packard’s applied-for patent claims indefinite—they

“contain[ ] words or phrases whose meaning is unclear.” 

In effect, this was a finding by the USPTO that they were 

not in compliance with the statutory requirement that 
2 IN RE PACKARD

“claims particularly point[ ] out and distinctly claim[ ] the 

subject matter [of] the invention.” 35 U.S.C. § 112(b).1 

Mr. Packard, on appeal to this court, insists that the 

only proper standard is the “insolubly ambiguous” standard, which he believes is invariably applied by this court

to challenges to claim construction involving indefiniteness of terms, and not the different standard applied to 

his case by the Board. He believes that, had the Board 

applied the standard he advocates, his claims would not 

have been held indefinite. 

To decide Mr. Packard’s appeal on the terms he presents requires an examination of this court’s ‘indefiniteness’ standard as well as the one applied by the Board. If 

they differ in significant ways, a determination must be 

made of the propriety, as a matter of law, of the Board’s 

choice of standard. 

I note at the outset an important point of judicial process. The Supreme Court recently agreed to address the 

question of the proper standard for this court to apply to 

cases coming before the court raising an ‘indefiniteness’ 

issue, including the role of the “insolubly ambiguous” 

standard in this court’s jurisprudence. Fortunately, it is 

possible to explore fully the issues in Mr. Packard’s appeal without transgressing upon the Supreme Court’s 

territory—more on this later. 

On the merits of the appeal, once we conclude what 

standard of review is applicable we would have to decide

the correctness of the Board’s conclusion regarding indefiniteness of the applicant’s patent claims. For better or 

worse, the suspense regarding that part of the case is 

gone—the per curiam opinion has announced who wins; to 

1 As we did in the per curiam opinion, since the relevant substantive language has not changed I will use the 

current designators for the sections of the statute.

 
IN RE PACKARD 3

help explain the outcome I will only add at the end some 

additional salient facts to those contained in the per 

curiam opinion. 

A. 

Addressing then the arguments pressed by Mr. Packard, I turn first to the judicially crafted law—both of this 

court and the Supreme Court—regarding the standard for 

clarity of claims in an issued patent. As far back as 1853, 

when addressing the definiteness requirement of patents, 

the Supreme Court emphasized the overriding policy 

considerations that claims must unambiguously define 

any invention over the prior art, and provide notice to the 

public. See Brooks v. Fiske, 56 U.S. 212 (1853). The

requirement of claim specificity was central “so that the 

public may know what they are prohibited from doing

[during the term of the patent] and what they are to have 

at the end of the term, as consideration for the grant.” Id. 

at 214-15. The Court in Brooks also emphasized that 

“[t]he patentee ought to state distinctly what it is for 

which he claims a patent and describe the limits . . . for 

the purpose of warning an innocent purchaser, or other 

person, using the machine, of his infringement . . . .” Id. 

at 215. 

This emphasis by the Supreme Court has remained 

consistent over the last century and a half.2 The Supreme 

2 See, e.g., White v. Dunbar, 119 U.S. 47, 52 (1886) 

(reiterating that an inventor’s patent claims must “define 

precisely what his invention is,” because ambiguity is 

both “unjust to the public” and “an evasion of the law.”); 

see also Merrill v. Yeomans, 94 U.S. 568, 570-74 (1887)

(finding that a distinct claim is “of primary importance, in 

the effort to ascertain precisely what it is that is patented”); Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 

364, 372 (1938) (analyzing whether or not the language of 

 
4 IN RE PACKARD

Court’s most recent case to date on indefiniteness and 

claim clarity is United Carbon Co. v. Binney & Smith Co., 

317 U.S. 228, 236 (1942).3 Here the Supreme Court wrote 

that: 

The 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. A zone of uncertainty which enterprise and experimentation 

may enter only at the risk of infringement claims 

would discourage invention only a little less than 

unequivocal foreclosure of the field. Moreover, the 

claims must be reasonably clear-cut to enable 

courts to determine whether novelty and invention are genuine. . . . Whether the vagueness of 

the claim has its source in the language employed 

or in the somewhat indeterminate character of the 

advance claimed to have been made in the art is 

not material. An invention must be capable of accurate definition, and it must be accurately defined to be patentable.4 

The United Carbon case further pointed out that patent 

claims that are “so indefinite as not to give the notice 

the claims “conveyed definite meaning to those skilled in 

the [relevant] art”).

3 As noted above, and cited in footnote 10 below, the 

Supreme Court currently has before it a case raising the 

issue of the standard for indefiniteness under § 112(b). 

4 In this excerpt the Court used the term “claim” in 

two different senses: to mean what the patentee was 

claiming in the patent as its invention, and in the civil 

litigation sense of lawsuit. To avoid confusion, unless 

specifically stated otherwise, I will use the unmodified 

term “claim” only in the patent sense.

 
IN RE PACKARD 5

required by the statute would be in direct contravention 

of the public interest which Congress therein recognized 

and sought to protect.” 317 U.S. at 233. As before, this

understanding of the requirement for claim clarity focused on the precise language of the claim, and related to 

a theoretical person of skill in the art—the patent law 

version of the reasonable man—and how that person 

would understand the claim language. 

The statute referred to by the United Carbon case was 

35 U.S.C. § 33 (1932), the predecessor to today’s § 112(b). 

That section included almost identical language to the 

current requirement—the applicant for a patent “shall 

particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.” 35 U.S.C. § 33.5 Even before 1932, the 

Act of 1836 had similar language, stating that patent 

claims “shall particularly specify and point out the part, 

improvement, or combination which he claims as his own 

invention or discovery.” See Miller v. Brass Co., 104 U.S. 

350, 354 (1882). Thus, throughout this history of patents, 

the statutory language regarding claim clarity remained 

largely unchanged, and indeed so did the understanding 

of what the statute requires. 

After the 1952 enactment of the current Patent Act 

(U.S. Patents Act, 35 U.S.C. §§ 1 et seq., 66 Stat. 792 (July 

19, 1952)), which now includes § 112(b),6 cases continued 

the focus on the claim language, and what one of ordinary 

skill in the art would understand the claim to mean,

5 The current version of § 112(b) states in full: “The 

specification shall conclude with one or more claims 

particularly pointing out and distinctly claiming the 

subject matter which the inventor or a joint inventor 

regards as the invention.” 35 U.S.C. § 112(b) (2012). 6 As explained earlier, pursuant to § 4(c) of the AIA, 

section 112(b) replaced paragraph 2 of 35 U.S.C. § 112. 

 
6 IN RE PACKARD

viewed in the light of any language in the written description that explained or defined the claim. Sitting en banc,

this court in Phillips v. AWH Corp., 415 F.3d 1303, 1312-

13 (Fed. Cir. 2005) “restat[ed] the basic principles of claim 

construction.” We said, “We have made clear, moreover, 

that the ordinary and customary meaning of a claim term 

is the meaning that the term would have to a person of 

ordinary skill in the art in question at the time of the 

invention . . . .” 

In his appeal, Mr. Packard argues that, whatever the

historical standard may have been, the standard for 

indefiniteness of a term in a claim is now governed by the 

phrase “insolubly ambiguous,” and that under this standard a claim is not indefinite if a court can give any meaning to the disputed term in the context of the claim. He is 

of the view that the “insolubly ambiguous” standard 

applies to how this court decides indefiniteness. Further, 

he argues, that this standard is mandated for both our 

use in deciding cases in which the patent has already 

issued and is being challenged (“post-issuance cases”), and 

also in cases in which no patent has yet issued but in 

which the applied-for claims are being evaluated by the 

USPTO (“pre-issuance cases”). He believes that this 

standard is more favorable to his case than the traditional 

test of what one of ordinary skill in the art would understand, and clearly more favorable than the standard 

applied to him by the USPTO.

 Mr. Packard cites as authority the 2001 case of Exxon Research and Engineering Company v. United States, 

265 F.3d 1371 (Fed. Cir. 2001). In Exxon, the Government had filed a motion for summary judgment seeking to 

have the two patents at issue held invalid for indefiniteness. The trial court—the Court of Federal Claims—

granted the motion.

On appeal, this court reversed. The court conceded 

that a number of the terms in the patents were ambigu-
IN RE PACKARD 7

ous—“the trial court was correct to fault the Exxon patents as lacking in specificity in several respects.” Id. at 

1376. Nevertheless, in pursuit of a way to construe the 

claims so as to uphold their validity—the court emphasized the fact that the Patent Act created a presumption 

of validity for issued claims—the court undertook a 

lengthy examination of the terms in the patents that were 

challenged. The court concluded that, though a close 

question (the patentee “could easily have cured the ambiguity by adding a single word or phrase to the claims . . .” 

id. at 1383), they nevertheless were not fatally flawed. 

Id. at 1384.

At the beginning of the relevant section of the Exxon 

opinion addressing the indefiniteness issue (there were 

multiple issues in the case), and again at the conclusion of 

the full opinion, the court stated the traditional test for 

claim construction: whether the claims were so ambiguous 

that one of skill in the art could not reasonably understand their scope. See id. at 1375, 1384. However, in the 

course of the opinion the court opined that claims need 

only “be amenable to construction, however difficult that 

task may be,” and that a claim is invalid only when it is 

“insolubly ambiguous, and no narrowing construction can 

properly be adopted.” Id. at 1375. 

The phrase “insolubly ambiguous” was new; neither of 

the two cases cited in support contained the phrase, and 

no previous opinion of this court or the Supreme Court 

had employed it. It is interesting to note that four years 

later, when the court en banc purported to restate, based 

on our prior cases, the basic principles of claim construction, no mention was made of either Exxon or of the 

phrase “insolubly ambiguous.” See Phillips, 415 F.3d at 

1312. 

Whatever the court in Exxon may have intended by

the “insolubly ambiguous” phrase, Mr. Packard is not 

alone in his employment of it and what it seemed to 
8 IN RE PACKARD

mean. A number of later cases in this court dealing with 

indefiniteness issues recited both the traditional version 

of the doctrine—that the test was what one of ordinary 

skill in the art would understand the claim limitation to 

mean, or some variant of that language—and then at 

some point employed the Exxon notion of “insolubly 

ambiguous”—that claims need only be amenable to construction, however difficult for a court that task may be. 

Given this state of affairs, it should come as no surprise 

that it was not always clear which version of the test, or 

what other factors, may actually have dictated the result 

in some of these cases.7

For completeness, I note that the perceived differences in this court’s articulation of the indefiniteness 

standard is said to have had an effect on the behavior of 

the trial courts as well. In a study of district court cases 

in the years immediately following Exxon (2001-2005), the 

author of the study stated that during those years “district courts sparingly invalidated patents for lack of 

definiteness.” See David A. Kelley, In the Wake of Datamize and Halliburton: The Recent Spate of Patent Invalidations for Indefiniteness and the Implications for Patent 

Holders, 75 Pat. Trademark & Copyright J. (BNA) 456 

(2008). The study noted, however, that there was a sharp 

increase in invalidations after 2005 and the issuance of 

7 See Christa J. Laser, A Definite Claim on Claim 

Indefiniteness: An Empirical Study of Definiteness Cases 

of the Past Decade with a Focus on the Federal Circuit 

and the Insolubly Ambiguous Standard, 10 Chi.-Kent J. 

Intell. Prop. 25, 25 (Fall 2010) (“These differences [among 

the cases analyzed] partially result from the Federal 

Circuit incorporating an evidentiary burden into the 

‘insolubly ambiguous’ standard and inconsistently applying the ‘insolubly ambiguous’ standard.”).

 
IN RE PACKARD 9

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d. 1342, 

1347 (Fed. Cir. 2005). Id. 

In Datamize the court cited to the Exxon “insolubly 

ambiguous” language, but then added that “[s]ome objective standard must be provided in order to allow the 

public to determine the scope of the claimed invention,” 

id. at 1350; consequently the court held the phrase “aesthetically pleasing” to be fatally ambiguous. 417 F.3d at 

1356. The author of the district court study reads this 

addition as undercutting the Exxon standard, and, according to the study, indefiniteness invalidations in the district courts rose nearly 250 percent in the 30 months 

following Datamize, compared to the 30 months preceding 

it.8 (The other case the study thought significant, Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d. 1244

(Fed. Cir. 2008), affirmed a district court’s holding that 

“fragile gel” was fatally ambiguous, citing the Datamize

standard.) 

Thus, over time the “insolubly ambiguous” phrase 

that Mr. Packard alleges is the only correct test of indefiniteness has taken on a life of its own. It has generated 

considerable controversy,9 and has now led to this case in 

8 See also David A. Kelley, Indefiniteness Invalidations Continue to Rise Sharply in 2008, 77 Pat. Trademark & Copyright J. (BNA) 576, 576 (2009).

9 See, e.g., Dennis Crouch, Is “Insolubly Ambiguous” 

the Correct Standard for Indefiniteness?, PATENTLY-O 

(Sept. 21, 2013), http://patentlyo.com/patent/2013/09/isinsolubly-ambiguous-the-correct-standard-forindefiniteness.html; Federal Trade Comm’n, The Evolving 

IP Marketplace: Aligning Patent Notice and Remedies 

with Competition, 94-103 (March 2011), 

http://www.ftc.gov/reports/evolving-ip-marketplacealigning-patent-notice-remedies-competition; David A. 

Loewenstein and Clyde Shuman, United States: The 

 
10 IN RE PACKARD

which the issue of what the phrase might mean is argued 

as determinative of the appellant’s patent rights. And 

most recently it has led to a petition to the Supreme 

Court, that the Court has now granted, that challenges 

the fundamental validity of the “insolubly ambiguous” 

standard.10

Of particular importance to this discussion and to the 

outcome in the case, and though Mr. Packard’s argument 

is to the contrary, for purposes of deciding this case it is 

not necessary to determine whether the traditional test 

employed by courts for determining indefiniteness has or 

has not been modified or superseded by Exxon’s “insolubly 

ambiguous” phrase. Nor is it therefore necessary, assuming “insolubly ambiguous” differs from the traditional 

test, to address whether that test is a permissible reading 

of the statutory requirement that claims “particularly 

point[ ] out and distinctly claim[ ] the subject matter” of 

the invention. As noted, the Supreme Court has decided 

that it is the proper forum for those questions, and it 

would be inappropriate at this time for a lower court to 

address them in an opinion. 

Fortunately, I need not go there in order to judge Mr. 

Packard’s arguments. This is because, having now identified these two arguably controlling tests applied by this 

Federal Circuit’s “Insolubly Ambiguous” Standard of 

Indefiniteness, MONDAQ BUSINESS BRIEFING (Nov. 26, 

2008), http://www.mondaq.com/unitedstates/x/70266

/Patent/The+Federal+Circuits+Insolubly+Ambiguous+Sta

ndard+Of+Indefiniteness; Eric Yeager, Claim Whose 

Undefined Terms Are Reasonably Discernable Is Not 

Invalid, 67 Pat. Trademark & Copyright J. (BNA) 427 

(2004). 

10 Nautilus, Inc. v. Biosig Instruments, Inc., 715 F.3d 

891 (Fed. Cir. 2013), cert. granted, 82 U.S.L.W. 3195 (U.S. 

Jan. 10, 2014) (No. 13-369), argued on April 28, 2014.

 
IN RE PACKARD 11

court to cases on review from the district courts, it will be 

enough to show that both of the tests, whatever their 

scope may be, differ in material respects from the test 

applied to Mr. Packard’s claims by the Board. And then, 

it will be only necessary to decide whether the USPTO 

test, even though it differs materially from ours, is a 

permissible one under the law for the Board to apply to 

proposed claims under USPTO review. 

B. 

Before proceeding further, there are definitional questions that require some clarification. So far I have used 

the term “indefiniteness” as shorthand for the complex of 

issues surrounding the requirements for clear drafting in 

patents. It is the custom among patent practitioners, and 

the courts as well, to refer to something called “indefiniteness” as a generalized drafting error that, when 

recognized, will invalidate a patent, or a patent claim in 

particular. However, the term “indefiniteness” (or its 

grammatical variants) subsumes several different and 

distinct issues that require separate analysis.

First, as a matter of legal terminology there is, under 

current law, no statutory reference to a definiteness 

requirement, nor a statutory provision that invalidates a 

patent or a patent claim for “indefiniteness.” The relevant statutory requirements are found, as earlier noted, 

in section 112 of the Patent Act. This section is entitled 

“Specification.” Subsection (a) of section 112 states that 

“the specification shall contain a written description of the 

invention,” and sets out specific criteria for judging its

adequacy—it must be set out in “full, clear, concise, and 

exact terms . . . .” 35 U.S.C. § 112(a) (2011). 

As previously noted, subsection (b) of § 112 provides 

that the Specification shall conclude with one or more 

claims “particularly pointing out and distinctly claiming

the subject matter which the inventor . . . regards as the 

invention.” 35 U.S.C. § 112(b) (2011). Thus, the written 
12 IN RE PACKARD

description (which presumptively includes the significant 

parts of the patent related to claim construction other 

than the claims themselves) and the claims themselves 

each have separate and specific criteria they must meet.11 

There is a second level of distinction that is important 

to recognize in any given case. In terms of inadequacy of 

descriptiveness to meet the applicable statutory standard, 

whether for a written description or for a claim, a term or 

phrase may have one of two shortcomings: it may be 

ambiguous, or it may be incoherent. (For simplicity, 

hereafter I will use “term” to include “phrase,” i.e., to 

include one or more words.) 

An incoherent term means that there is no reasonably 

understandable meaning of the term in the context in 

which it appears. More correctly, it means that one of 

ordinary skill in the art cannot ascertain any reasonable 

meaning of the term as used. In patent litigation the 

labeling of a disputed patent claim term as “incoherent” is 

rarely seen. 

11 With regard to terminology, the casual use by 

practitioners, including counsel in this case, of “specification” when what is meant is actually the “written description” is incorrect, though widely practiced. The statutory 

term “specification” includes both the written description 

and the claims. The use of the broader term “specification” when what is meant specifically is “written description” adds to verbal confusion as well as the potential for 

thought confusion. Importantly, there are no statutory 

requirements as such governing the adequacy of something called a “specification,” while there are specific 

statutory requirements governing both the “written 

description” and the “claims.” The late honored and 

beloved Judge Giles Rich, one of the principal architects of 

the 1952 Patent Act, decried the profession’s constant 

misuse of these terms.

 
IN RE PACKARD 13

An ambiguous term, on the other hand, is a term that 

offers to one of skill in the art more than one reasonable 

meaning, each of which meanings may have more or less 

justification in context for being what was intended, and 

each of which meanings would result in different patently-distinctive outcomes. This is the oft-seen claim construction dispute, in which each party in a patent suit will

provide expert testimony from one of allegedly ordinary 

skill in the art in support of that party’s construction of a 

disputed claim term, in hopes that it will be adopted by 

the court and result in a ruling in the party’s favor, 

whether regarding validity or infringement, or both. 

The interpretive issue in these claim construction disputes presents several policy options, including: 

1) Give controlling weight to the policy of upholding 

the USPTO’s decision to issue a presumptively valid 

patent, with substantially less concern for the notice 

function of patents. Thus, find a possible meaning that 

preserves the validity of the patent claim, without particular regard for what competitors or the public might have

understood, i.e., what would be understood by those 

skilled in the art involved at the time of the invention.12 

Since claim construction is a matter of law with no 

formal deference given to the trial judge (Cybor Corp. v. 

FAS Tech., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc); 

see also Lighting Ballast Control LLC v. Philips Elecs. N. 

Am. Corp., ___ F.3d ___, 2014 WL 667499 (Fed. Cir. Feb. 

12 But see Phillips, 415 F.3d at 1327 (“While we have 

acknowledged the maxim that claims should be construed 

to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of 

claim construction.”)

 
14 IN RE PACKARD

21, 2014), under this interpretive option the “right” construction will be known definitively only when the Court 

of Appeals judges (or the Supreme Court) choose it. 

2) Give weight to the notice function of patents, while 

still recognizing the role of the presumption of validity. 

Thus, choose from among the available meanings the one 

that seems to best accord with what one of reasonable 

skill in the art would understand to be intended, and 

which the public, including competitors, would assume to 

be the correct reading. When there is more than one such 

understanding, as sometimes appears to be the case, this 

could lead to a preference for the understanding that 

preserves the validity of the patent claim.13 

3) Give full weight to the importance of the notice 

function of patents, recognizing that it is the claim drafter/patentee who is ultimately responsible for problems 

created by ambiguous terms. When confronted with a 

patent claim that has several reasonable meanings for 

which the patent itself demonstrates no preference (and 

certainly true of an incoherent term), the result of this 

option would be a holding that an ambiguous term by 

definition fails to comply with the statutory requirements 

for claim drafting. Thus, if a member of the public in 

order to understand the patent claim must guess about 

the meaning of an ambiguous term, the claim would not 

be patentable and is otherwise invalid.14 

13 See Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 

1573, 1581 (Fed. Cir. 1996), for a subset of this option, 

choosing the narrowest meaning that upholds the patent, 

thus maximizing the opportunity for competitors to design 

around it without infringing. 14 For a statement of this interpretive option by the 

courts in Canada, see Lord Loreborn’s three-part test, 

cited in Harold C. Wegner, Lord Loreborn’s Test for 

 
IN RE PACKARD 15

When addressing “indefiniteness” in an issued patent 

(a post-issuance case), these are among the interpretive 

options available to judges. Mr. Packard’s argument

regarding the “insolubly ambiguous” standard essentially 

incorporates the first of these interpretive options. As 

between the second and third interpretive options, there 

appears to be nothing in the cases invoking the traditional standard—what one of ordinary skill in the art would 

understand—that necessarily dictates which of these 

latter interpretive options controls in a given case, or even 

whether there should be an established policy option for 

all post-issuance cases. 

C. 

The discussion thus far has focused on the question of 

this court’s standard for review of compliance with the 

statutory requirement for claims as they appear in issued 

patents, the post-issuance situation. This examination 

was made necessary by Mr. Packard’s insistence that this 

court has a singular standard for such cases, that this

standard differs materially from the standard applied by 

the Board to his case, and that our standard is the one 

that must be used by the Board. 

However, the above discussion reveals that there currently is not one singular standard used by this court but 

rather a complex of standards, though a complex whose 

range nevertheless can be described. The question then 

remains, is the Board’s standard substantively different 

from the standard(s) ostensibly applied by this court and, 

if so, is it nevertheless permissible. 

Mr. Packard is correct when he argues that this 

court’s “standard” (or complex of standards, however 

§112(b) Indefiniteness, Paper presented at the Second 

Annual Naples Midwinter Patent Experts Conference, 

Naples, FL (February 10-11, 2014). 

 
16 IN RE PACKARD

understood) for indefiniteness in post-issuance cases 

differs materially from the standard for indefiniteness 

applied by the Board to pre-issuance cases. In its opinion 

in this case the Board, as noted earlier, invoked as its 

standard for determining compliance with the requirements of § 112(b) the standard set forth in the MPEP: a 

claim is indefinite when it contains words or phrases 

whose meaning is unclear. See MPEP § 2173.05(e). 

In effect, the USPTO reads the statutory requirement 

that claims “particularly point[ ] out and distinctly claim

[ ] the subject matter . . .” to mean that ambiguity in 

claiming, whether intended or inadvertent, is not acceptable.15 The patent examiner’s duty is to insist that 

the applicant remove the perceived ambiguity by more 

precisely defining the scope of the claim. And should an 

examiner’s rejection on grounds of noncompliance with 

the statute be taken up on appeal to the Board, the Board 

will enforce the same standard. This position comports 

most closely to the third of the policy options outlined in 

the preceding section. 

From its response to Mr. Packard, I understand the 

Board position to be that it applies the traditional test to 

claims proposed by a patent applicant, namely, whether 

what is claimed is reasonably understood by one of ordinary skill in the art. However, in applying this test the 

Board does so in a manner—the “lower threshold”—that 

is uniquely applicable to the pre-issuance situation. 

15 See 3M Innovative Props. v. Tredegar Corp., 725 

F.3d 1315, 1334 (Fed. Cir. 2013) (Plager, J., concurring) 

(“[s]ometimes such ambiguity [in claim drafting] is the 

result of sloppy drafting, and sometimes it appears that 

claims are drafted with a degree of indefiniteness so as to 

leave room to later argue for a broad interpretation designed to capture later-developed competition.”).

 
IN RE PACKARD 17

A review of our post-issuance cases reveals that when 

this court has been called upon to decide an indefiniteness 

challenge, no opinion has yet expressly adopted the third 

interpretive option described previously, essentially the 

one that the USPTO now uses. Thus our precedents 

make clear that, whether our standard is thought to be 

either the first option—“insolubly ambiguous” (however 

understood)—or the second option—the traditional “one of 

ordinary skill” test—discussed earlier, the USPTO’s 

application of the traditional standard goes well beyond 

what this court is known to apply to claim interpretation 

when the issue is post-issuance compliance with § 112(b). 

Thus the issue remaining to be decided is whether the 

Board, as a matter of law, is entitled to apply the third 

interpretive option to its understanding of the traditional 

test for indefiniteness. Mr. Packard argues that the 

Board may not do that. He propounds that in his case the 

Board applied the wrong standard for indefiniteness in 

two ways. First, Mr. Packard argues that a “person of 

ordinary skill in the art is deemed to read the claim term 

not only in the context of the particular claim in which the 

disputed term appears, but in the context of the entire 

patent, including the specification.” Appellant’s Br. 35 

(citing Phillips, 415 F.3d at 1313). The Board, he argues, 

refused to do that, and instead stated that its analysis 

focused solely on “the language of the claims, . . . [not] on 

what is contained in the disclosure.” Id. at 36. 

Second, and more to the point, Mr. Packard argues 

that the Board wrongly invoked its own “lower threshold” 

for indefiniteness, rather than this court’s “insolubly

ambiguous” standard. Mr. Packard argues that it is an 

error for the Board to adopt a test for indefiniteness that 

differs from what he describes as this court’s “longestablished ‘insoluble ambiguity’” test. Appellant’s Br. 18. 

He further argues that the “Board cannot ignore this 

[c]ourt’s precedent or substitute its own test for indefiniteness for this [c]ourt’s analysis.” Id. at 39. Overall, in 
18 IN RE PACKARD

Mr. Packard’s view, “this [c]ourt has consistently applied 

a single standard for claim definiteness, both pre-issuance 

and post-issuance,” and Mr. Packard argues that “[t]he 

Board’s rejection of this [c]ourt’s ‘insolubly ambiguous’ 

standard and its implicit application of a ‘lower threshold 

of ambiguity’ pursuant to Miyazaki was error.” Id. at 38-

39 (citing Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 

(B.P.A.I. 2008)).

The USPTO, in response to Mr. Packard’s first point,

argues that the Board’s decision clearly shows that it 

attempted to read the claims in light of the written description. “But the specification [read written description] 

only added to the ambiguity of the claims, because it 

describes the features of the coin-holder in a manner both 

internally inconsistent and inconsistent with the 

claims.”16 Appellee’s Br. 8. 

Second, addressing the main question, that of the 

proper test for the Board to use, the USPTO says it “asks 

the same question as this [c]ourt in assessing the indefiniteness of a claim—i.e., whether a skilled artisan could 

reasonably discern the metes and bounds of the claim.” 

Id. at 9. But, says the USPTO, while their approach to 

answering that question during prosecution may effectively result in a lower threshold for ambiguity than a court’s, 

their approach provides a legitimate means for ferreting 

out indefinite claims prior to issuance. 

The USPTO argues that the patent system works best 

when claim ambiguity is resolved during examination, 

rather than to await litigation to determine the actual 

scope of a claim. Accordingly, says the USPTO, the 

16 The USPTO also pointed out that the Board did 

not rely upon the Miyazaki decision in upholding the 

Examiner’s rejection of the claims for indefiniteness. 

Appellee’s Br. 21.

 
IN RE PACKARD 19

agency must have the ability to require applicants to 

amend their claims to ensure that the claims are concise, 

clear, and unambiguous, or in the words of the statute, 

that they particularly point out and distinctly claim the 

subject matter which the inventor regards as the invention. 

As I noted at the end of introductory section A, above, 

the issue of the permissible test for USPTO pre-issuance 

indefiniteness cases can be decided without resolving 

whether this court’s current test for post-issuance indefiniteness is the traditional standard, focused on what one 

of skill in the art would understand, or the allegedly 

different “insolubly ambiguous” standard as Mr. Packard 

views it, or some combination of the two. This is because, 

as the above discussion makes clear and as Mr. Packard 

argues, the test proposed by the Board for its use in preissuance claim disputes differs materially from this 

court’s application of either (or both) of those standards. 

On this question I agree with Mr. Packard.

D.

I turn then to Mr. Packard’s underlying argument, 

that the test applied by the Board to pre-issuance matters 

of claim interpretation cannot differ from that applied by 

this court to post-issuance claim construction disputes. 

As explained above, the Board proposes to apply the 

traditional standard but with the third of the interpretive 

policy options outlined earlier. Namely, if one of ordinary 

skill in the art, after considering the information provided 

by the applicant including the written description, and 

after putting the disputed term in the context of the 

proposed patent, finds the claim to contain words or 

phrases whose meaning is unclear, then the examiner is 

to require the applicant to “more precisely define the 

metes and bounds of the claimed invention” by issuing an 

indefiniteness rejection. See Miyazaki, 89 U.S.P.Q.2d at

1211. And on appeal to the Board, should the applicant 
20 IN RE PACKARD

fail or refuse to provide the needed clarification, the 

Board will apply the same interpretation requirement.

In my view (and that of the per curiam court), it is 

within the authority of the USPTO to so interpret the 

applicable standard. Further, it is my view that, as a 

policy matter, this court should support the USPTO in so 

doing. To begin with, I find nothing in the statutes that 

precludes the USPTO from adopting such guidance for the 

examiners and the Board.17 Beyond that, no precedent of 

this court or of the Supreme Court addressing patent 

claim construction issues suggests that such a position on 

the part of the USPTO would be beyond its authority in 

the proper administration of the governing statutes. On 

the contrary, as pointed out in the per curiam opinion, 

this court in In re Zletz, 863 F.2d 319 (Fed. Cir. 1989), and 

in Halliburton, 514 F.3d 1244 highlighted the important

role that the USPTO, through its examination process, 

plays in ensuring the quality of patents and compliance 

with the statutory requirements. 

The problem of indefiniteness in patent claiming has 

been a major concern of courts, as well as commentators,18 and efforts by the USPTO to improve the situation

17 There is no issue regarding the USPTO’s rulemaking authority. The application of a “lower threshold” 

for ambiguity is an interpretive policy regarding an 

already existing statutory standard. It is not the establishment of a new previously non-existent substantive 

standard such as would be at issue in a Chevron-type 

analysis. 18 Phillips, 415 F.3d at 1312 (“The role of the specification in claim construction has been an issue in patent 

law decisions in this country for nearly two centuries.”); 

Laser, supra note 5, at 25 (An empirical study of patent 

claim definiteness cases finding that the Federal Circuit 

inconsistently applies the “insolubly ambiguous” standard 

 
IN RE PACKARD 21

certainly are to be encouraged. There are good reasons 

why unnecessary incoherence and ambiguity in claim 

constructions should be disapproved: 

• they generate many of the claim construction disputes that plague the courts;19 

• they increase the cost to the society of new products 

and ideas. As one study put it, “[l]ow quality patents are those that protect inventions of limited 

when evaluating claim clarity.); Jeanne C. Fromer, 

Claiming Intellectual Property, 76 U. Chi. L. Rev. 719, 

772-781 (2009) (arguing for a return to ‘central’ claiming 

and a departure from ‘peripheral’ claiming in patent 

cases); Monica C. Moran and Tony Dutra, Professor 

Suggests Supplementing Patent, Copyright Claiming to 

Stimulate Innovation, 77 Pat. Trademark & Copyright J. 

(BNA) 41, 41 (2008) (analyzing Jeanne Fromer’s central 

claiming arguments); Kirk M. Hartung, Claim Construction: Another Matter of Chance and Confusion, 88 J. Pat.& 

Trademark Off. Soc’y 831, 831 (2006) (“Unfortunately, 

claim construction still is a matter of chance and confusion for patent owners, accused infringers and their 

patent attorneys. And the matter is only getting worse.”); 

S. Jay Plager, Challenges for Intellectual Property Law in 

the Twenty-First Century: Indeterminacy and Other 

Problems, 2001 U. Ill. L. Rev. 69, 72 (2001) (“The challenge here is how to help trial judges, as well as ourselves, 

understand what is being claimed so that there is less 

room for misunderstanding.”).

19 See, e.g., James R. Barney and Charles T. CollinsChase, An Empirical Analysis of District Court Claim 

Construction Decisions, January to December 2009, 2011 

Stan. Tech. L. Rev. 2, 7 (2011); see also, David L. 

Schwartz, Practice Makes Perfect? An Empirical Study of 

Claim Construction Reversal Rates in Patent Cases, 107 

Mich. L. Rev. 223, 246 (Nov. 2008).

 
22 IN RE PACKARD

novelty or that provide overly broad protection . . . , 

which can be costly to society,” Patents and Innovation: Trends and Policy Challenges, OECD, 28 

(2004), http://www.oecd.org/science/sci-tech

/24508541.pdf; 

• they inhibit the opportunity for design-arounds and 

legitimate competition. A Federal Trade Commission Study observed that an overly broad patent 

“can block competition . . . and harm innovation,” 

Federal Trade Commission, To Promote Innovation: 

The Proper Balance of Competition and Patent Law 

and Policy, A Report by the Federal Trade Commission, at 3 (October 2003), http://www.ftc.gov

/sites/default/files/documents/reports/promoteinnovation-proper-balance-competition-and-patentlaw-and-policy/innovationrpt.pdf;20 

• and they waste scarce judicial resources on claim 

construction cases that should never have been 

necessary to litigate, supporting and encouraging

the kinds of litigation that have made “patent 

trolls” dirty words. (Patent trolls are also known 

by a variety of other names: “patent assertion entities” (PAEs), “non-practicing entities” (NPEs).)21 

20 See also Keith E. Maskus, Reforming U.S. Patent

Policy: Getting the Incentives Right, COUNCIL ON FOREIGN 

RELATIONS, CSR No. 19, at 19 (Nov. 2006), available at 

http://www.cfr.org/content/publications/attachments/Pate

ntCSR.pdf (“[P]atent holders with broad claims on platform technologies may try to use those claims to discourage competitors through licensing restrictions and 

litigation against technologies on similar products.”)

21 See, e.g., Executive Office of the President, Patent 

Assertion and U.S. Innovation, at 9 (June 2013), 

http://www.whitehouse.gov/sites/default/files/docs/patent_

 
IN RE PACKARD 23

Beyond these persuasive policy reasons, as a legal 

matter the USPTO does not have to deal with the presumption of validity the statutes grant to post-issuance 

patents—sometimes said to hinder such an interpretation 

by courts. Furthermore, unlike courts which have a full 

prosecution record to consider, the prosecution record 

before the USPTO is in development and not fixed during 

examination, and the USPTO does not rely on it for 

interpreting claims.

The fact that this court has not yet seen fit to apply 

the same interpretive policy option to post-issuance cases 

as the USPTO wishes to apply to pre-issuance cases is no 

reason why the USPTO, given its unique and central role 

in the patenting process, should not be able to apply it in 

dealing with pre-issuance patent applications.

In short, there are no legal obstacles to the USPTO’s 

proposed interpretation, and there are compelling reasons 

why, as a policy matter, this court should not preclude or 

otherwise interfere with the USPTO carrying out its full 

responsibilities under the Patent Act. Further, there is no 

reason why those trained and employed in the art of 

report.pdf (“Even if patent assertion entities do not prevail in the courtroom, their actions can significantly 

reduce incremental innovation while litigation is ongoing, 

a situation that can persist for years,”); James Bessen, et 

al., The Private and Social Costs of Patent Trolls, 34 

Regulation 26, 26 (Winter 2011-2012) (“To the extent that 

. . . NPEs opportunistically assert ‘fuzzy patents’ against 

real technology firms, they can decrease the incentives for 

these firms to innovate.”); but see Mark A. Lemley & A. 

Douglas Melamed, Missing The Forest For the Trolls, 113 

Colum. L. Rev. 2117, 2117 (2013) (“trolls are a symptom of 

larger flaws in the patent system . . . those who have 

focused on trolls have, in effect, been missing the forest 

for the trolls.”).

 
24 IN RE PACKARD

patent and patent claim drafting cannot comply with the 

USPTO requirements, recognizing that the nature of the 

invention and the particular art involved will affect the 

degree to which precision in language is possible.22

E. 

Finally, as noted in the per curiam opinion, I offer a

few additional notes with regard to the question of Mr. 

Packard’s proposed claims and their compliance with the 

standard of review the USPTO has chosen to apply. 

The disputed phrases and arguments of Mr. Packard 

and the USPTO are outlined in Appendix 1. I agree with 

the Board that the term “front top side” is indefinite. Mr. 

Packard might have used either “front side” or “top side” 

and done so in a way that was consistent with the terminology in the written description. Using different terms 

to refer to the same portion of the card—“front top side” 

and “surface of the card”—creates its own ambiguity. 

Thus, I would affirm the Board’s finding that the terms 

“front top side” and “surface of the card” are indefinite.

I also agree with the Board that Mr. Packard created 

an ambiguity in his claims when he introduced “a raised . 

. . end edge” and then referred later to “the . . . edge end.” 

It is not clear whether these two phrases refer to the same 

“end” or to two different “ends.” Mr. Packard should have 

corrected this ambiguity during prosecution. Therefore, I 

would affirm the Board’s finding that the claim terms “a 

raised . . . end edge” and “the edge end” are indefinite. 

Lastly, I agree that it is unclear whether “one side edge” 

refers back to the “double flanged side edges” introduced 

22 See generally Thomas Suddendorf, The Gap: The 

Science of What Separates Us from Other Animals (Basic 

Books, 2013) (the difference ultimately is the motivation 

of authors to create symbols and grammar to share what 

they know). 

 
IN RE PACKARD 25

previously in the claim or if it refers to something else 

entirely. Therefore, I would affirm the Board’s finding 

that this term is indefinite.

I have considered each of Mr. Packard’s remaining arguments and find them unpersuasive. Mr. Packard’s over 

ten pages of explanatory briefing illustrates that the 

claim language itself lacks the requisite minimum clarity 

to define the boundaries of the claims. By leaving the 

claims ambiguous, the public and the courts are left to 

clarify the patent’s boundaries, in direct conflict with the 

requirements of the case law. See, e.g., United Carbon, 

317 U.S. at 236.

As stated at the beginning of this opinion, I arrive at 

the same conclusion as we arrived at in the per curiam

opinion. I get there both by way of the “narrow” route in 

the per curiam opinion, which I join, and also by way of 

addressing Mr. Packard’s arguments directly; for the 

reasons I explained I find the latter unavailing. 
26 IN RE PACKARD

APPENDIX 1

Disputed 

Term

Mr. Packard’s 

Argument

USPTO’s 

Argument

“flat 

plane”

The Board erred by 

construing “flat 

plane” to be so 

perfectly and 

impossibly “flat” 

that it could not 

include “raised” 

edges. The written 

description makes 

it clear that the 

“flat plane . . . card” 

is not intended to 

be absolutely flat, 

but rather it is 

described with 

many raised components. 

“[F]lat plane” is 

indefinite on the 

basis that the 

claimed card cannot 

be a flat plane when 

its front top side also 

includes a plurality 

of “raised” edges.

“[F]lat,” by its plain 

meaning in the 

dictionary, means 

having a smooth 

level surface, and the 

court should not 

redraft the claims to 

mean “mostly flat.”

“front top 

side” and 

“surface of 

the card”

The “front top side”

is the entire front 

side of the card, 

including structures such as the 

raised edges. 

“[T]he surface” 

requires no antecedent basis because the card only 

has two surfaces, 

and one skilled in 

the art would 

“[F]ront top side” per 

se lacks clarity, as it 

suggests that the 

front side possesses 

both “top” and “bottom” portions, of 

which claim 28 

specifies that only 

the “top” portion 

contains the separators and retainers.

Because the claim 

employs two different 
IN RE PACKARD 27

understand that 

“the surface” is on 

the side of the card 

where the coins are 

stored.

terms, “the surface” 

does not necessarily 

imply the “front top 

side,” as the Board 

correctly explained.

“the raised 

side end 

edge”

“[T]he raised side 

end edge” does not 

lack antecedent 

basis because a 

person of skill in 

the art would 

understand that it 

refers to the 

claimed “raised 

side edge end.”

This term has no 

antecedent basis. 

Also, as the Board 

observed, whether 

the term “a raised 

side edge end” refers 

to the west or the 

east edge of the coin 

holder is unclear 

because the claim 

provides no location 

for this element, and 

the specification fails 

to describe “a raised 

side edge end.”

“one side 

edge”

The “one side 

edge” does not 

require antecedent 

basis because it is 

not preceded by 

“the” or any other 

word referring to a 

previous claim 

element. 

Ambiguity exists as 

to whether the “one 

side edge” refers back 

to the “double 

flanged side edges” 

located at the north 

and south edges of 

the coin holder, or 

some other edge, 

such as the west edge 

of the coin holder.