Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

Published 09/27/2017 by staff

Introduction

On August 25, 2017, the Patent Trial and Appeal Board has decided Ex parte McAward. The case revolved around the patentability of James Gerard McAward’s invention of a “water leakage detectors...which are easily connectable to flexible water hoses, and, can be coupled together to monitor leakage from hot and cold supplies.”

Claims 1-20 were deemed indefinite, while Claims 1-7 and 10-20 were deemed unpatentable by the examiner in the Final Action because of lack of novelty and/or obviousness over prior art identified by the examiner. Appellants James Gerard McAward et al. sought review from the Patent Trial and Appeal Board.

Decision

The following is the excerpted Claim 1, chosen to represent Claims 1-20 as the rest stand or fall with the claim:

“1. A water detector comprising:

a housing;

flow connectors carried by the housing including a spin-on female pipe connector at an inflow end and a spin-on male pipe connector at an outflow end;

at least one water presence sensor carried by the housing;

an electrically actuatable valve, carried by the housing, and having first and second states; and

control circuits, carried by the housing, coupled to the sensor and valve, and, responsive to a leakage indicating signal from the sensor, the circuits actuate the valve causing it to change state wherein the control circuits detect flood conditions, shut off a malfunctioning water branch to a home appliance and communicate to a premises alarm communication device or home automation system via a wireless link and wherein the water detector is configured to be reliable installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.

The examiner challenged the “metes and bounds” of McAward’s invention, which according to the examiner were not clearly defined within Claim 1. Rather than providing additional description of the invention being claimed, McAward’s claim further describes the skill level required to utilize the apparatus by stating that the water detector is “configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber and cost effective adoption.” The language does not capture the structure of the invention. There is no language specifically claiming the subject matter.

Furthermore, it is claimed that no tools are needed for installation, but including this quality does not further describe the apparatus’s structure because it does not specify which tools are not needed. Again, rather than specifying the structure of the invention, the claim refers to the minimal skill level needed to utilize the invention. It is also noted that a “homeowner” can easily install the apparatus; however, a “homeowner” encompasses a varied collection of people who represent a wide range of skills.

In addition to the aforementioned points, Claims 1-7 and 10-20 were rendered unpatentable over the combined teachings of Walter (US 7,549,435) and Kaplan (US 7,403,839). McAward’s claimed water detector comprises “a housing [and] flow connectors carried by the housing including a spin-on female pipe connector at an inflow end and a spin-on male pipe connector at an outflow end.” Per the patent Examiner, Walter “fail[s] to explicitly show or teach the limitations wherein the flow connectors include ‘a spin-on female pipe connector at an inflow end and a spin-on male pipe connector on an outflow end’” but “it would have been obvious to modify the flow connections of the device of Walter to be ‘spin-on’ connectors...”

Furthermore, the patent Examiner found that the process of wireless communication to a remote device forewarning a possible flood was well known in the art, and states that “it would have been obvious ‘to use wireless communication in the device of Walter to allow remote and convenient wireless communication between the control module of the valve and a remote monitoring system, as it is taught by Kaplan” (19).

For the above reasons, the Patent Trial and Appeal Board affirmed the patent Office’s decisions of rendering Claims 1-20 as indefinite, and Claims 1-7 and 10-20 as unpatentable for being obvious.

Conclusion

The USPTO is responsible for ensuring that each patent clearly defines what is claimed so that other inventors are aware of where their patents’ boundaries lie. After being considered indefinite, a process is initiated during which the applicant has the opportunity to respond with amendments or evidence that the patent claims are sufficiently definite. Doing so in turn ensures that the rights gained through the patent are consistent with the inventor’s contribution to the field, and that the public seeking to invent have a clear understanding of what has already been done.

Full Ex parte McAward decision can be read here: https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20McAward%202017_08_25.pdf

PATENT and IP Law Blog

CIONCA IP - MC4/1/2023 5:21:45 PM

UNICOLORS, INC. v. H&M HENNES & MAURITZ L. P. – A Synopsis of a Copyright Infringement Case
More
CIONCA IP - MC1/14/2023 2:21:06 PM

Broad specification or broad claims in a patent application?
More
CIONCA IP - EC12/23/2022 9:28:33 PM

Is Mariah Carey the “Queen of Christmas”?
More
CIONCA IP - MC10/7/2022 9:33:56 PM

Rejection of Invention or Rejection of Patent Claims?
More
CIONCA IP (MC)7/13/2022 5:27:56 PM

Who is the owner of the trademark? Priority and Senior User Disputes
More
CIONCA IP TEAM (SE)5/6/2022 5:19:00 PM

Documentarian
More
CIONCA IP TEAM (SE)4/29/2022 4:56:42 PM

An Apple from the Apple Tree
More
CIONCA IP TEAM (SE)4/22/2022 4:44:26 PM

Electrochemiluminescence
More
CIONCA IP TEAM (SE)4/8/2022 4:51:08 PM

Gametime
More
CIONCA IP TEAM (BS)4/1/2022 5:05:16 PM

Screentime
More
CIONCA IP TEAM (SE)3/25/2022 4:58:23 PM

Internet Protocol Addresses
More
CIONCA IP TEAM (BS)3/16/2022 5:00:54 PM

We TINK It Should Be Protected
More
CIONCA IP TEAM (SE)3/4/2022 4:54:18 PM

Tinker Bell
More
CIONCA IP TEAM (SE)2/25/2022 5:01:34 PM

Computer Memory
More
CIONCA IP TEAM (SE)2/18/2022 4:22:47 PM

Machine or Transformation
More
CIONCA IP TEAM (SE)2/11/2022 4:52:28 PM

Air Force 1
More
CIONCA IP TEAM (SE)1/14/2022 4:52:22 PM

Fees and more Fees?
More
CIONCA IP TEAM (SE)12/17/2021 4:51:21 PM

Royalty or Lowborn
More
CIONCA IP TEAM (SE)12/10/2021 5:06:54 PM

Short-Range Wireless Networks
More
CIONCA IP TEAM (SE)12/3/2021 4:58:39 PM

TIGHT or TITE
More
CIONCA IP TEAM (SE)11/19/2021 4:57:10 PM

TAG Your It!
More
CIONCA IP TEAM (SE)11/12/2021 4:56:57 PM

Medical Patents
More
CIONCA IP TEAM (SE)11/5/2021 4:40:14 PM

Authentic Army
More
CIONCA IP TEAM (SE)10/29/2021 4:49:28 PM

Scouting Trademarks
More
CIONCA IP TEAM (SE)10/22/2021 4:10:03 PM

Free Speech and Trademarks
More
CIONCA IP TEAM (SE)10/15/2021 4:55:32 PM

DNA of Patents
More
CIONCA IP TEAM (SE)10/8/2021 5:02:03 PM

Backyard Trademarks
More
CIONCA IP TEAM (SE)10/1/2021 4:58:25 PM

Take a seat and read about seats
More
CIONCA IP TEAM (SE)9/24/2021 5:15:50 PM

Let's take a ride on the Segway!
More
CIONCA IP TEAM (SE)9/17/2021 4:57:53 PM

An Apple off the Apple Tree
More
CIONCA IP TEAM (SE)9/10/2021 4:59:08 PM

VROOM VROOM VROOM
More
CIONCA IP TEAM (SE)9/3/2021 4:56:24 PM

On Copyrights of Annotations.
More
CIONCA IP TEAM (SE)8/27/2021 4:55:40 PM

Rejecting Trademark Contracts
More
CIONCA IP TEAM (SE)8/20/2021 4:42:46 PM

It's a Bratz Girl, in a Barbie World (Pt. 2)
More
CIONCA IP TEAM (SE)8/13/2021 4:57:49 PM

Personalized Medication
More
CIONCA IP TEAM (SE)8/6/2021 4:39:04 PM

It's a Bratz Girl, in a Barbie World
More
CIONCA IP TEAM (SE)7/31/2021 3:21:56 AM

Ice Cream, You Scream
More
CIONCA IP TEAM (SE)7/23/2021 4:12:50 PM

Cereal Killer
More
CIONCA IP TEAM (SE)7/16/2021 5:00:45 PM

Buy me a ring, darling
More
CIONCA IP TEAM (SE)7/7/2021 2:52:33 PM

Offensiveness vs Free Speech in Trademark Law
More
CIONCA IP TEAM (SE)6/25/2021 4:45:12 PM

Woof Woof - Trademark Law
More
CIONCA IP TEAM (SE)6/18/2021 5:29:44 PM

Forum Selection 101
More
CIONCA IP TEAM (SE)6/11/2021 4:23:58 PM

Willful v Innocent
More
CIONCA IP TEAM (SE)5/17/2021 2:38:30 PM

Thryv, Inc. v. Click-To-Call Technologies, LP
More
CIONCA IP TEAM (SE)4/23/2021 5:34:02 PM

Oracle Patent Problems
More
CIONCA IP TEAM (SE)4/5/2021 5:38:23 PM

Blockchain and the Expanding US Patent Landscape
More
CIONCA IP TEAM (MC)3/24/2021 2:19:11 PM

Invention and Art Analogy
More
CIONCA IP TEAM (BR)1/19/2021 4:57:54 PM

QuikTrip West, Inc. v. Weigel Stores, Inc.
More
CIONCA IP TEAM (AP)12/7/2020 4:06:28 PM

St Jude Medical LLC v Snyders Heart Valve LLC
More
CIONCA IP TEAM (SE)12/1/2020 5:07:58 PM

Allen v. Cooper, Governor of North Carolina
More
CIONCA IP TEAM (JM)10/8/2020 2:57:24 PM

Royal Crown Company Inc., Dr. Pepper/Seven Up Inc., v The Coca-Cola Company
More
CIONCA IP TEAM (SG)10/6/2020 2:42:35 PM

Apple, Inc., v. Voip-Pal.com, Inc.: Sanction Orders and Obviousness
More
CIONCA IP Team (SE)9/16/2020 4:21:45 PM

CIONCA IP Launches New Online Patent Website
More
CIONCA IP Team9/15/2020 5:11:49 PM

Comparing Apples to Apples: TTAB on In re Horizon Group USA, Inc.
More
CIONCA IP Team9/3/2020 4:30:41 PM

D2 Holdings v. House of Cards
More
CIONCA IP Team8/31/2020 12:09:17 PM

Blackbird Tech LLC, DBA Blackbird Technologies, v. Fitbit, Inc., Wahoo Fitness LLC: Obviousness
More
CIONCA IP Team8/11/2020 11:56:24 AM

Adidas AG v. Nike INC.
More
CIONCA IP Team7/20/2020 7:40:21 PM

Fitbit Inc. v. Valencell Inc.: Joint Parties in IPR Proceeding
More
CIONCA IP Team7/14/2020 7:51:31 PM

CIONCA IP Launches New Online Trademark Website
More
CIONCA IP 5/19/2020 7:36:30 PM

Uber Technologies, Inc. v. X One, Inc.: “Obvious to Try” Rationale
More
Marin Cionca4/15/2020 4:41:43 PM

The Day After COVID-19 Pandemic – Hope or Fear?
More
CIONCA IP4/13/2020 9:33:36 PM

Two of a Kind: TTAB on Shannon DeVivo v. Celeste Ortiz
More
CIONCA IP3/16/2020 8:43:10 PM

GS CleanTech Corporation v. Adkins Energy, LLC: Inequitable Conduct
More
CIONCA IP3/10/2020 7:45:30 PM

Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.
More
Marin Cionca2/9/2020 7:46:10 PM

Analogous Prior Art or Not? A critical patent obviousness question
More
CIONCA IP 1/15/2020 4:47:19 PM

FOX Factory, Inc. v. SRAM, LLC: Presumption of Nexus
More
CIONCA IP 1/9/2020 4:43:58 PM

The Bigger Picture: TTAB’s Decision in In re James Haden, M.D., P.A.
More
CIONCA IP 12/31/2019 4:29:41 PM

The Chamberlain Group, INC. v. One World Technologies, INC.
More
Marin Cionca12/9/2019 8:07:20 PM

A “glove” approach to patent claim construction
More
11/15/2019 8:15:11 PM

Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying
More
CIONCA IP10/16/2019 1:28:13 PM

To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment
More
CIONCA IP10/7/2019 5:44:50 PM

A Decision in Henny Penny Corporation v. Frymaster LLC
More
Marin Cionca9/27/2019 9:32:48 PM

Can an Online Patent Attorney File My Patent?
More
CIONCA Team Member9/4/2019 7:20:46 PM

Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries
More
CIONCA Team Member8/19/2019 7:46:17 PM

In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
More
CIONCA Team Member8/5/2019 2:29:33 PM

Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
More
CIONCA Team Member7/5/2019 2:22:42 PM

In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
More
CIONCA Team Member6/27/2019 7:41:52 PM

Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
More
Marin Cionca6/11/2019 8:43:17 PM

Can I Successfully License My Invention?
More
CIONCA Team Member5/20/2019 8:25:57 PM

PTAB Designates Cases as Precedential
More
CIONCA Team Member5/7/2019 7:13:41 PM

The Federal Circuit Defines a Technological Invention
More
Marin Cionca4/17/2019 3:48:33 PM

What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
More
CIONCA Team Member4/3/2019 7:25:37 PM

The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
More
CIONCA Team Member3/21/2019 3:49:43 PM

Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
More
Marin Cionca3/1/2019 9:36:50 PM

USPTO Director Andrei Iancu Visits Orange County!
More
CIONCA Team Member2/19/2019 7:12:46 PM

Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
More
CIONCA Team Member2/5/2019 7:22:27 PM

TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
More
Marin Cionca1/23/2019 9:45:30 PM

Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
More
CIONCA Team Member1/4/2019 4:12:21 PM

In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
More
CIONCA Team Member12/18/2018 6:12:48 PM

Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
More
Marin Cionca12/8/2018 8:35:06 PM

IP Assets - Procurement, Enforcement, Monetization
More
CIONCA Team Member11/19/2018 1:07:51 PM

The Appeals Process
More
CIONCA Team Member10/16/2018 6:50:31 PM

A Double-Edged Sword: Benefit of Priority or Longer Patent Term
More
Marin Cionca10/1/2018 7:42:12 PM

Can I Register a Color as a Trademark or Service Mark?
More
CIONCA Team Member9/17/2018 4:33:20 PM

Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
More
Staff8/31/2018 7:26:58 PM

Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
More
Staff8/16/2018 4:24:01 PM

Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
More
Marin Cionca7/31/2018 6:50:05 PM

My patent expired? Can I still sue for patent infringement?
More
7/3/2018 7:44:33 PM

Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
More
CIONCA IP5/17/2018 9:54:58 PM

Marin Cionca Presents at OCIPLA May 2018 Luncheon
More
5/4/2018 7:37:51 PM

The Hague System for Protection of International Designs
More
CIONCA Staff4/20/2018 5:25:25 PM

USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
More
CIONCA Staff4/13/2018 9:10:04 PM

It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
More
3/20/2018 12:50:05 PM

Andrei Iancu - New Director of the USPTO
More
3/8/2018 1:25:46 PM

Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
More
CIONCA Team2/16/2018 4:07:48 PM

Fashion and Intellectual Property
More
CIONCA Team1/17/2018 8:12:06 PM

A Fork in the Road: Production or Protection?
More
1/2/2018 7:47:09 PM

The Lanham Act: Disparagement Provision Violates the First Amendment
More
12/26/2017 6:04:25 PM

CIONCA Sets Foot in San Francisco
More
12/1/2017 8:01:27 PM

An Introduction to Patent Cooperation Treaty Applications
More
11/17/2017 1:24:20 PM

An Introduction to Patent Searches
More
11/10/2017 6:47:44 PM

An Introduction to Design Patent Applications
More
Staff11/3/2017 4:20:04 PM

An Introduction to Provisional Patent Applications
More
Staff9/28/2017 7:27:22 PM

CIONCA
More
staff9/27/2017 5:12:07 PM

CIONCA - Patent and Trademark Law Attorney
More
staff9/27/2017 5:00:12 PM

Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
More
staff9/15/2017 9:33:30 PM

cionca
More
CIONCA Staff8/20/2017 3:16:11 PM

CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
More
CIONCA - Staff8/9/2017 5:39:58 PM

Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
More
CIONCA - Staff6/28/2017 8:26:07 PM

Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
More
CIONCA - Staff6/15/2017 5:32:14 PM

Patent Law: Challenging the Patent Claim Definiteness Requirement
More
Marin Cionca4/25/2017 9:48:49 PM

Monetization of Patents: How to Make Money with Patents
More
Marin Cionca2/21/2017 12:30:52 AM

Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
More
Marin Cionca9/15/2016 9:47:39 PM

Patent Law Alert: Federal Circuit Opens Door for More Software Patents
More
Marin Cionca9/6/2016 9:26:12 PM

Patent Case Law: New Example of Software as Patentable Subject Matter
More
Iris Kim, PhD6/1/2016 7:04:50 PM

The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
More
Marin Cionca5/17/2016 8:57:23 PM

Patent Claims Rejection Based on Inherency
More
Iris Kim, PhD3/25/2016 8:34:14 PM

Challenging a Claim’s Validity with Different Standards of Claim Construction
More
I. Kim PhD2/26/2016 8:47:51 PM

The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
More
Marin Cionca2/16/2016 6:34:53 PM

In IPRs, patentees have to show that substitute patent claims are patentable
More
M. Cionca and I. Kim2/4/2016 5:55:16 PM

Software Inventions Are Still Patentable!
More
Marin1/28/2016 9:15:16 PM

The Patent Trial and Appeal Board Designates Two Decisions as Precedential
More
Marin1/28/2016 9:10:56 PM

How Unpredictability Can Affect Obviousness Challenges
More
Marin11/19/2015 2:13:05 PM

An Innovator’s Dilemma: Design or Utility Patent?
More
Marin11/18/2015 7:31:35 PM

When Is a Thesis Prior Art?
More
Marin11/18/2015 6:15:40 PM

Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
More
Marin11/18/2015 6:11:11 PM

PTAB Decisions Give Examples of Patent Eligible Subject Matter
More

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

VERIFY

CONTACT INFO

TOLL FREE 800-454-1360
GET IN TOUCH
SEE MORE CONTACT INFO

About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.

HOME

Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198

Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

PATENT and IP Law Blog

CONTACT INFO

Let’s talk!

QuickContact 24/7

1-800-454-1360