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Claims to "fragile gel" indefinite even though term defined in specification

By McKee, Voorhees & Sease, P.L.C.

In a second decision Friday, the Federal Circuit affirmed a district court's finding of 35 U.S.C. § 112, second paragraph indefiniteness.  The term was defined in the specification, however the district court held that definition was too subjective and unclear, largely because it relied on relative terms.  The proper scope was also not discernable from the figures, as they did not define the scope of the invention as compared to the prior art.

The Federal Circuit affirmed, finding that the claims were insolubly ambiguous.  The court held that one aspect of the proposed definition was not supported by the claim language or specification.  The other two aspects of the definition, while having support in the claims, nevertheless left one of ordinary skill in the art unable to "translate the definition into meaningfully precise claim scope."  As such, the court affirmed the finding of indefiniteness

The court also took the opportunity to discuss functional limitations in claims, and their relationship to indefiniteness.  While the court acknowledged that functional claim language is acceptable in some situations, such language sometimes does not "provide a clear-cut indication of the scope of subject matter embraced by the claim."  The court also invited the USPTO to require patent applicants to clarify the scope of functional limitations, stating:

When a claim limitation is defined in purely functional terms, the task of determining whether that limitation is sufficiently definite is a difficult one that is highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area). 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.

More detail of Halliburton Energy Servs., Inc. v. M-I, LLC after the jump.

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Full post as published by FileWrapper on January 28, 2008 (boomark / email).