Unreasonably Broad Claim Construction during Patent Prosecution

by Joseph Iskra on January 2, 2012

in Claim Construction, Patent Claims

During patent prosecution, patent claims are to be given their broadest reasonable interpretation consistent with the specification and as interpreted by a person having ordinary skill in the art.  (see MPEP 2111 – Claim Interpretation; Broadest Reasonable Interpretation)(emphasis added)

This article examines a recent BPAI decision which found an Examiner’s claim construction as unreasonably broad in view of specific definitions provided in the specification for various claim features.

 

Ordinary and Customary Meaning unless Applicant Acts as Their Own Lexicographer

Unless the Applicant provides a “special definition” for a claim term within the specification, the common meaning of the claim term will control:

“[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted). ‘[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.’ Id. at 1313. ‘[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.’ Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (internal citations omitted).” (see Ex parte Boehme et al., Appeal No. 2009-008700 (BPAI))

 

Broadest Reasonable Claim Construction Consistent with the Specification during Patent Prosecution

The BPAI in Ex parte Boehme indicated that the Federal Circuit has cautioned against unreasonably broad claim constructions:

“Although the PTO emphasizes that it was required to give all ‘claims their broadest reasonable construction’ particularly with respect to [the] use of the open-ended term ‘comprising,’ see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (‘the open-ended term comprising … means that the named elements are essential, but other elements may be added’), this court has instructed that any such construction be ‘consistent with the specification, … and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’  In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).

The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940).”  (In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010))(emphasis added)

 

Applicant Acting as Their Own Lexicographer

The BPAI in the instant appeal found that the Appellants acted as their own lexicographers as they provided specific definitions for various claim features:

“In the present Specification, the Appellants present just such a definition of specific portlets and generic portlets, and such a definition must be honored in the claims. (See FF #2, above.) … the Examiner has not presented a teaching in Khan that anticipates the use of specific and generic portlets, as defined in the specification … the term portlets, as used in the Dumbill reference, does not conform to the definition of portlets in the Specification of Appellants’ application.”

In view of the foregoing, to avoid having a claim term construed further to its common meaning, one will likely want to provide a specific definition within the specification.  Finally, it must be remembered that the Federal Circuit (sitting en banc) in Phillips v. AWH Corp stated:

“As we stated in Vitronics, the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (emphasis added)

Joseph Iskra

Joseph Iskra* is a registered Patent Attorney with Butzel Long in Bloomfield Hills, MI. Joe's deep interest in working with cutting edge electrical and computer technologies led him toward a Bachelor of Science Degree in Electrical Engineering and a Juris Doctorate Degree.

Prior to joining Butzel Long, Joe prosecuted patent applications for multiple Intellectual Property law firms in Washington, D.C. for several years. Through this experience, Joe worked extensively with international clients and focused his practice almost entirely upon patent prosecution. Prior to law school, Joe worked for a major consulting firm as a system developer and for multiple corporations during his undergraduate studies as an engineering intern.

Feel free to contact Joe using the Contact Webpage of this website if you have a patent matter for which you require assistance. Cheers!

* Licensed to practice law in the District of Columbia and before the United States Patent and Trademark Office (USPTO), the Eastern and Western District Courts of Michigan, and the United States Court of Appeals for the Federal Circuit (CAFC).

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