Inre: Packard, 751 F.3d 1307

Applicant Packard filed a pre-AIA patent application for a thin plastic coin-holding card; claims 28–37 (representative claims reproduced) were amended during prosecution.
Examiner rejected claims for lack of written description (some claims), indefiniteness under 35 U.S.C. § 112(b), and obviousness; Packard amended claims but persisted ambiguities.
The Board affirmed the examiner’s indefiniteness and written-description rejections (reversing obviousness), applying MPEP § 2173.05(e): “a claim is indefinite when it contains words or phrases whose meaning is unclear.”
Packard appealed, arguing the Board applied the wrong indefiniteness standard and that the Federal Circuit’s “insolubly ambiguous” (or one‑of‑ordinary‑skill) standard should govern pre-issuance review.
The Court (per curiam) affirmed the Board: USPTO may issue a well‑grounded prima facie indefiniteness rejection during prosecution and sustain it if the applicant fails to provide a satisfactory response (amendment, definition, or persuasive explanation).

Issue	Packard's Argument	USPTO/Board's Argument	Held
Proper indefiniteness standard for pre‑issuance claims	The Federal Circuit’s “insolubly ambiguous” / one‑of‑ordinary‑skill standard must apply to USPTO pre‑issuance review	USPTO applies MPEP standard (claim terms are indefinite if meaning is unclear) and may require clarification during prosecution	Board’s MPEP approach is permissible for pre‑issuance examination; affirmed
Burden during examination	Applicant contends examiner must meet same (higher) judicial standard before rejecting	Examiner may make a prima facie showing of indefiniteness; burden then shifts to applicant to rebut or amend	Examiner’s prima facie process is proper; applicant failed to rebut or amend adequately
Role of specification in curing ambiguity	Packard argued claims should be read in light of the specification to cure doubts	Board read claims in light of specification but found specification created or failed to resolve ambiguities	Court agreed that claims—considered with specification—remained indefinite
Need to reach written‑description issue	Packard pressed written‑description problems too	USPTO said indefiniteness disposes of all claims, mooting some written‑description disputes	Court upheld indefiniteness and declined to resolve written‑description question further

Kappos v. Hyatt, 132 S. Ct. 1690 (2012) (APA review framework for PTO actions)
Dickinson v. Zurko, 527 U.S. 150 (1999) (standard of review for agency factfinding)
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction principles; ordinary‑and‑customary meaning)
Exxon Research & Eng’g v. United States, 265 F.3d 1371 (Fed. Cir. 2001) (used “insolubly ambiguous” language in indefiniteness discussion)
In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984) (prima facie case concept in prosecution)
In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (role of USPTO in refining claim clarity during prosecution)
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) (objective standard for definiteness; invalidated “aesthetically pleasing”)
Halliburton Energy Servs., Inc. v. M‑I LLC, 514 F.3d 1244 (Fed. Cir. 2008) (affirmed indefiniteness where claim term lacked objective boundaries)
United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942) (statutory particularity/distinctness requirement and public notice function)
Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891 (Fed. Cir. 2013) (Fed. Cir. indefiniteness jurisprudence; certiorari granted)