Ex Parte Fressola
27 U.S.P.Q. 2d 1608 (B.P.A.I. 1993)

  • Fressola invented a new kind of home planetarium that let you see the stars in 3-D. He filed a patent.
    • Fressola's application included a claim that said:
      • A system for the display of stereographic three-dimensional images of celestial objects as disclosed in the specification and drawings herein.
  • The USPTO denied the claim. Fressola appealed.
    • The USPTO found that the claim failed to point out and distinctly claim the subject matter of the invention, so it did not meet the requirements of 35 U.S.C. 112 ¶2.
  • The USPTO Board of Patent Appealed and Interferences (BPAI) affirmed.
    • The BPAI found that claims which incorporate by reference ("...as disclosed in the specification and drawings...") are not specific and distinct enough to meet the standards required by 112 ¶2.
      • Statements that incorporate by reference lack any fixed legal meaning and can lead to vagueness and misinterpretation.
    • The Court noted that there are two ways that courts can consider how tightly defined a claim must be in order to be valid.
      • The central definition involves the drafting of a narrow claim setting forth a typical embodiment coupled with a broad interpretation by the courts to include all equivalent constructions.
      • The peripheral definition involves marking out the periphery or boundary of the area covered by the claim and holding as infringements only such constructions as lie within that area.
    • The Court found that the US uses the peripheral system, and so claims must be very tightly defined. Fressola's claim was not definitive enough to be valid.
  • Basically, under US law, this sort of claim is invalid because it does not itself define the invention but instead relies on external material.