In a May 6 decision, the Federal Circuit dealt for the first time with the appropriate indefiniteness standard that the USPTO should apply to pre-issuance claims. The Federal Circuit resolved the matter without regard to the proper indefiniteness standard to be applied in post-issuance cases (that issue is currently under review by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc.). Rather, the Federal Circuit concluded that when the USPTO issues a well-grounded indefiniteness rejection based on lack of clarity, the Applicant must provide a satisfactory response. Because Packard failed to provide a satisfactory response to the USPTO’s indefiniteness rejection, the Federal Circuit affirmed the PTAB. In a concurring opinion, Judge Plager concluded that it is within the authority of the USPTO to interpret the applicable indefiniteness standard to be applied in examination of claims. Click here for our detailed summary of this decision.