Every time I read a citation in the MPEP and actually research the cited case, I am reminded that the MPEP is merely the Office’s interpretation of the law. And sometimes that interpretation is nothing short of maddening.

A case in point is with regard to MPEP 2173.06 - Compact Prosecution. What could be better than the MPEP pointing out the requirements of Office personnel fully examining claims with the goal of compact prosecution? Nothing! And when you first read the MPEP section, it sounds great:

The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity.

Yes! Exactly.

Under the principles of compact prosecution, the examiner should review each claim for compliance with every statutory requirement for patentability in the initial review of the application and identify all of the applicable grounds of rejection in the first Office action to avoid unnecessary delays in the prosecution of the application.

You Betcha.

Thus, when the examiner determines that a claim term or phrase renders the claim indefinite, the examiner should make a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as well as a rejection(s) in view of the prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable based on the examiner’s interpretation of the claim. …When making a rejection over prior art in these circumstances, it is important that the examiner state on the record how the claim term or phrase is being interpreted with respect to the prior art applied in the rejection. By rejecting each claim on all reasonable grounds available, the examiner can avoid piecemeal examination. See MPEP § 707.07(g) (“Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available . . . .”).

Absolutely. Makes perfect sense.

I. PRIOR ART REJECTION OF CLAIM REJECTED AS INDEFINITE

All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.

Two approaches? Mmmm… I sense trouble.

First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted.

OK… yeah… we got that part already… so what’s the second approach?

Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.

Uh oh. That seems like a giant exception that can swallow the rule. Here is how examiners utilize it:

Now, everyone can appreciate that there needs to be a balance, and some claims can be very unclear. But even then, all the examiner has to do is put forth their interpretation and search/examine that interpretation. Then, at least the applicant will have to put on record their arguments or amendments for their desired interpretation with some idea of the possible art. Most examiners do a good job with this, even when it is difficult. But providing a short-cut option with so much discretion enables those examiners intent on wearing down applicants to make hay. But, before that debate takes over, we have to ask - does In re Steele really support the MPEP’s “second approach.” Not surprisingly, it’s not even in the ballpark.

Let’s take a quote from in re Steele and see what was really going on in that case:

Our analysis of the claims indicates that considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims were made by the examiner and the board. We do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions. There is an admission by the board that the affidavits submitted show superiority of "samples of appellants' polymers employed in these tests over samples of the polymers of the reference patent". Before it can be held that the claims on appeal cover "a wide range of compositions," it is essential to know what the claims do in fact cover. As we have previously indicated, our analysis of the claims leaves us in a quandary as to what in fact is covered by them. We think the examiner and the board were wrong in relying on what at best are speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103 thereon.

Our study of the lengthy record of the Patent Office prosecution provides ample support for our conclusion that substantial confusion exists in the record at all levels of the prosecution as to the proper interpretation to be given to the appealed claims. We believe that this confusion arose and has continued because the claims do not particularly point out and distinctly claim the invention as required by 35 U.S.C. § 112.

We therefore have decided to resolve the issue herein by reversing the decision below because we find it based on unsupported speculative assumptions.

Our decision is not to be construed as meaning that we consider the claims on appeal to be patentable as presently drawn. These claims should, it seems to us, be reviewed to insure compliance with 35 U.S.C. § 112. See In re Citron, 251 F.2d 619, 45 C.C.P.A. 773.

Wait a minute Mister postman - there was not even a 112 rejection in in re Steele. The CCPA had to tell the Board to enter one. So, just from that we see that the case cannot stand for the principle for which the MPEP cites it (that you can enter only a 112 rejection when the claims are hard to understand). In re Steele is about the situation where there was no 112 rejection at all and the examiner/Board utilized an unreasonable interpretation to sustain a 103 rejection. The CCPA’s decision here makes perfect sense. When viewed in this light, the language of: “[w]e do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions” does not mean that the examiner should not consider 103 rejections when the claim is unclear and only give 112 rejections. Rather, the language means that the 103 rejection here is erroneous (and reversible error after having been set forth in a final rejection) because it is based on an unsupported, speculative, interpretation of the claims.

Unfortunately, while the MPEP suggests the desired (first) approach should be followed, it gives great discretion in permitting the short-cut (second) approach based on questionable reasoning and an improper interpretation of case law. What can an applicant do? Petition - likely the Office will simply cite the MPEP and deny the petition. Sue in the District of Columbia… but who has time for that…

While this seems like a small issue, for applicants with limited resources it can mean the difference between them giving up (and possibly giving up on their new product), and going forward to bring a new product to market.