In Ex Parte McAward, [Appeal 2015-006416 (Application 13/435,655)] (August 25, 2017), the Board of Appeals considered in definiteness under 35 U.S.C. § 112 in a rare precedential decision.  Applicant was claiming a water leakage detector that is easily connectable to flexible water hoses to monitor leakage from hot and cold water supply lines.  The claim included language that the detector is “configured to be reliably 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 Board began with an explanation of the rationale for the Office’s application of the Broadest Reasonable Interpretation to claims pending before the Office, one consequence of which is a lower threshhold for ambiguity than in the courts.  The Board explained that it did not understand that the Supreme Court’s Nautilus decision required any change in the Office’s approach to indefiniteness.  Thus the Board applied the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”  The Board acknowledged that this requirement is not a demand for unreasonable precision, and does not contemplate in every case a verbal precision of the kind found in mathematics, and invokes some standard of reasonable precision in the use of language in the context of the circumstances.

The Board then turned to the “configured” limitation of the claim, noting that it is unusual because, rather than further defining the water detector’s structure, including by reference to a function that the water detector is capable of performing, the claim language attempts to further define the water detector’s structure by the skill level required to install the water detector.  The Board found that this language “fails to provide adequate clarity to the required structure because the skill level of ‘an untrained installer or a homeowner’ is ambiguous and vague, and thus, the meaning of a structure configured to be “reliably installed” by such an installer is unclear.

While the applicant argued that a person having ordinary skill in the art would understand the “configured” limitation to mean “capable of being installed without special knowledge or tools,” the Board observed that the specification did not support this definition.  The Board found that the Specification contains no description of, for example, the knowledge or tools required for installation of the claimed water detector, nor does the Specification define the skill level of an “untrained installer” or a “homeowner.”  The Board concluded that the claim “the claim suffers from general vagueness and ambiguity.”

The Board went on to point out that even if the applicant’s definition was correct the “configured” limitation, when read in light of the Specification, fails to further clearly define the structure encompassed by the limitation.  In other words, the Board said, neither the claim language or specification delineates how a person of ordinary skill would determine whether a water detector that includes each of the structural limitations of claim 1 further satisfies the “configured” limitation.

For these reasons, the Board agreed with the Examiner that the claimed “configured” limitation, under the broadest reasonable interpretation when read in light of the Specification, is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.