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The opposite of patent reform September 20, 2011

Posted by Brian Schar in Patent prosecution, USPTO.

I received a heads-up from an Examiner recently that there had been a training and I should expect that claim terms including the word “substantially” would be rejected as indefinite under 35 USC 112 going forward.  Here’s one area where I really feel for the Examiners.  They aren’t attorneys and they’re not trained or equipped to deal with legal issues.  It’s hard enough to keep up with changes in Federal Circuit caselaw as attorneys.  The Examiners have to rely on infrequent PowerPoints from USPTO management that are inevitably months if not years behind the law, and which do not and cannot capture the nuances of the law.  By definition they’re behind the law curve with no way to ever climb it, through no fault of their own.

So, I wasn’t suprised, although I was unhappy, to receive the first office action yesterday which rejected all of my claims on the basis that I used the word “substantially,” which is now purportedly indefinite.  In August 2011 alone, 4035 patents issued that included the term “substantially” in their claims.  Does the USPTO contend now that all of those patents include claims that are invalid for indefiniteness?  Will they put out a press release that says, “hey, we’re sorry we issued hundreds of thousands of invalidly indefinite patents in the last 20 years, our bad”?  Nothing in the statutes, regulations or caselaw caused this.  Instead, some bureaucrat at the Patent Office decided that he or she wanted to change the interpretation of the word after decades of common usage, wrote up a PowerPoint in support of that interpretation, and caused perhaps the single most commonly used word in patent drafting to be considered “indefinite” by the examining corps.

Of course, the point of the word “substantially” is to take manufacturing tolerances into consideration, which is well known to those of ordinary skill in the art.  A “first structure” will never be “parallel to a second structure.”  The two will always be off-parallel, even by 0.0000001 degrees, if one can measure closely enough – and an infringer has every incentive to measure closely enough.  Without being able to use the term “substantially,” will manufacturers of physical devices be forced into the doctrine of equivalents in every single case to be able to argue that two infringing structures that are off parallel by 0.00000001 degrees are the “equivalent” of parallel structures?

Even more maddening is the fact that this new USPTO interpretation flies in the face of the Federal Circuit’s broad  “insoluably ambiguous” standard for determining indefiniteness.  Adding to the chaos is the fact that a purported goal of the “America Invents Act” is to decrease pendency – how can it decrease pendency for me to have to appeal every single case that includes the word “substantially” so that I can explain to the USPTO what one of ordinary skill in the art would consider that word to mean?

The so-called “training” on the term “substantially” will gum up the works at the USPTO even worse than KSR.


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