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PTO’s Claim Construction Cannot be Inconsistent with the Art

September 10, 2021by Beau Burton1

In Ex parte Johnson, the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s construction of a claim term because it conflicted with the meaning given in other patents from analogous art. 

The claims on appeal in Johnson were drawn to a prosthetic heart valve including, inter alia, a “cloth-covered undulating rod-like wireform.” Appellant’s specification defined the term “wireform” as “an elongated rod-like structure formed into a continuous shape defining a circumference around a flow orifice for supporting flexible leaflets in the various prosthetic valves herein.”  See US 2017/0239044, ¶ [0041]. 

In rejecting the claims as anticipated by US 5,928,281 (“Huynh”), the Examiner relied on element 99 of Huynh, which is shown below and linked here for convenience: 

Applying the broadest, reasonable interpretation and relying on a dictionary published in 2020, the Examiner found that element 99 of Huynh was a rod-like wireform because it had “an elongated structure with a shape similar to a stick, wand, staff, or the like.”  

Appellant disagreed with the Examiner’s construction, arguing element 99 of Huynh referred to a cloth top edge of a stent assembly rather than an “undulating rod-like wireform formed into a continuous shape having alternating cusps and commissures around a periphery.” Appellant’s argument was supported by Huynh’s description of element 99 as an “upper surface 99 (see FIG. 1) of [the] stent” and Huynh’s use of the term “wireform” elsewhere to refer to a “wire” or “wire-like” structure. Appellant’s construction was also consistent with the description of “wireform” in two separate analogous references to mean a bent “wire” structure (US 6,539,984 B2, issued Apr. 1, 2003) and a bent, machined, or molded “wire-like” structure (US 7,871,435 B2, issued Jan. 18, 2011).  

Rejecting the Examiner’s construction as unreasonably broad, the Board noted: 

It is well settled that prior art references may be indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art. Accordingly, the PTO’s interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art. 

Relevant to the Board’s decision were the contemporaneous patents and even the prior art relied on in the rejection, all of which were consistent with Appellant’s specification and construction.  

With Huynh lacking the claimed cloth-covered undulating rod-like wireform, the Board reversed the anticipation rejection.  

Takeaway: While it can be difficult to rebut an Examiner’s unreasonably broad construction of a claim term when the specification does not define, or does not sufficiently define, the claim term in question, valuable rebuttal evidence may be found in contemporaneous publications. As shown in Johnson, the Board found the consistent usage of the claim term in three analogous publications (including the allegedly anticipating reference) trumped the Examiner’s construction based on a generic dictionary definition. This is not to say dictionaries are always a poor source of evidence, but dictionaries typically include multiple definitions and a general definition may not accurately reflect how the claim term is used in the relevant art.  

Judges: S. Staicovici, E. Brown, W. Capp 

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Your Mother Was Right – Grammar Matters

January 29, 2021by Richard Treanor

The Federal Circuit’s recent decision in SIMO Holdings, Inc. v. Hong Kong uCloudlink Network Technology Limited (decision) highlights the importance of English grammar when drafting, revising, and amending patent claims in the U.S.

In SIMO, the relevant claim language reads:

A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, …

which, for purposes of discussion, can be rewritten as:

A … comprising a plurality of A, B, C, D, E and F, …

The District Court construed the important phrase “a plurality of” to require only “at least two” members selected from the entire list of A-F (e.g., A and B, A and F, C, D, and E, etc.), and as a result found the claim to be infringed. The Federal Circuit disagreed with this claim interpretation, however, and interpreted the claim to require at least two of each of the listed items.

The Federal Circuit based its decision on a very well-known English grammar sourcebook (William Strunk, Jr. & E.B. White, The Elements of Style) and on its earlier SuperGuide decision where it found that, as a matter of ordinary and customary meaning, a phrase grammatically comparable to “a plurality of” at the start of a list of items, joined together by “and”, applied to each item in the list, not to the list considered as a whole. The court further noted that the mix of plural, singular, and mixed-use forms of words in the list following “a plurality of” (“memory,” “processors,” “programs,” “circuitry,” “data,” “database”) made the SIMO phrase “a bit of a mess grammatically” and explained that, because the list uses “and” rather than “or,” the phrase is properly understood as if the word “of” appears before each item (i.e., a plurality of A, of B, of C, of D, of E and of F). As a result, and given the proper interpretation of the claim, the court determined that there was no infringement.

Takeaway: The SIMO case provides a good reminder to review U.S. claims for both accuracy and English grammar, either prior to submission (e.g., in a preliminary amendment) or in response to an Official Action.

Judges: O’Malley, Wallach, Taranto

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Obviousness Rejection Based on Unreasonably Broad Claim Interpretation Cannot Be Sustained

November 23, 2020by Yanhong Hu

A threshold issue for the Patent Trial and Appeal Board (“Board”) to resolve is often claim interpretation.  It is well-settled that claims must be “given their broadest reasonable interpretation consistent with the specification” during patent examination.  In Ex parte Awad (Appeal 2019-005866), the Board reversed the Examiner’s obviousness rejection because the Board found the rejection was based on an unreasonably broad claim interpretation when the relevant claim language was read in light of the specification.

Claim 1 was illustrative and was drawn to a flexible solar panel, which contained a polymer matrix and a plant extract completely incorporated in the polymer matrix and “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”

The Examiner rejected the claimed solar panel as obvious over Ochiai in view of Pavokovic and Yang.  In particular, the Examiner found Ochiai taught a solar panel containing a PVA matrix and a plant extract completely incorporated in the polymer matrix wherein the extract included green-colored chloroplasts.  The Examiner admitted Ochiai did not disclose that the plant extract was “a green-colored extract of B. vulgaris subsp. cicla.”  However, the Examiner found Pavokovic taught that betalains, such as those from B. vulgaris subsp. cicla, were useful as “natural pigments” in solar cells and found Yang taught that incorporating chlorophyll-containing plant extracts in a PVA polymer matrix stabilized the extracts against light- and oxygen-induced damage.

In response to Appellant’s arguments that betalains described in Pavokovic were “classified in two groups: red-violet betacyanins and yellow betaxanthins” and that Pavokovic did not teach “the usage of a green, chloroplast-containing extract of B. vulgaris subsp. [cicla] in a [dye-sensitized solar cell],” the Examiner argued he did not rely on Pavokovic “for teaching the entirety of the claimed plant extract,” instead, he relied on Pavokovic “only to teach that betalain extracts of B. vulgaris subsp. cicla are useful as natural pigments in solar cells to convert radiant energy into electric energy.”  The Examiner argued “Ochiai teaches a plant extract that is green and includes chloroplasts” and further argued “even if the betalains of B. vulgaris subsp. cicla are colors other than green, the final product created from the combination of the prior art references still contains a plant extract comprising the green-colored chlorophyll chloroplasts taught by Ochiai because these betalains are added to Ochiai’s plant-extract composition.”

Therefore, as noted by the Board, the Examiner interpreted the claim limitation of the plant extract “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts” to encompass any combination of plant extracts “as long as the final combination (a) is green-colored, (b) includes a B. vulgaris subsp. cicla extract, and (c) includes chloroplasts.”

The Board found such interpretation was broader than what was reasonable when the claim language was read in light of the specification.  Specifically, the Board noted that the specification stated that the field of the invention related “particularly to a flexible solar panel including an extract of chard (B. vulgaris subsp. cicla)” and that at no point did the specification discuss extracts from any plant other than B. vulgaris subsp. cicla.  The Board further found the specification specifically taught “a green colored extract of B. vulgaris subsp. cicla” and each of the working examples used an extract from B. vulgaris subsp. cicla, not from any other plant and not mixed with any other plant extract.

The Board thus concluded that, when the claim language was interpreted in light of the specification, the broadest reasonable interpretation of the claim limitation required “an extract from B. vulgaris subsp. cicla that itself is green-colored and also contains chloroplasts; i.e., the chloroplasts are derived from B. vulgaris subsp. cicla.”  The Board further explained “‘being’ in the quoted limitation is construed to mean ‘consisting of’: the plant extract consists of a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”  The Board explicitly pointed out that “[to] interpret the quoted limitation to encompass a mixture of plant extracts would be inconsistent with the specification’s disclosure.”

With the correct claim interpretation, the Board further found none of the cited references disclosed a green-colored extract from B. vulgaris subsp. cicla that included chloroplasts as required by the claim limitation.  Because the Board did not find the Examiner had shown the plant extract as required by the claim would have been obvious over the cited references or that the prior art would have provided a reason to use such an extract in the claimed solar panel, the Board reversed the obviousness rejection.

Takeaway:  U.S. examiners are required to give claims their broadest reasonable interpretation in light of the specification.  However, in practice, they sometimes fail to consider whether their “broadest” interpretation of the claim language is “reasonable in light of the specification.”  Therefore, it is advisable to scrutinize an Examiner’s claim interpretation especially when there is a complicated claim limitation that includes multiple sub-features.  As illustrated by Awad, examiners sometimes fail to recognize that sub-features are related, instead treating them separately. This approach can lead to unreasonably broad interpretations.

Judges:  E. B. Grimes, L. M. Gaudette, and L. Ren

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Revisiting “Informative” Board Decisions: Indefiniteness and Parameter Patents

July 13, 2020by Jacob Doughty

Ex parte Bobrowski is a 2008 decision of the Board of Patent Appeals and Interferences (BPAI) that is listed among the Patent Trial and Appeal Board’s (PTAB) informative decisions. Ex parte Bobrowski is indicated by the PTAB to be informative as to “35 U.S.C. § 112 – indefiniteness – In re Steele.”

The BPAI considered whether claims reciting particular parameters were indefinite and, thus, unpatentable under pre-AIA 35 USC § 112, second paragraph (which, like AIA 35 USC § 112(b), requires one or more claims “particularly pointing out and distinctly claiming the subject matter [regarded as the] invention”).

While the decision focused entirely on indefiniteness, the appeal was, in fact, an appeal of prior art rejections. However, the BPAI found the claims to be insufficiently clear and definite – even after consulting the specification – to allow comparison with the prior art. In framing its analysis, the BPAI cited In re Steele, 305 F.2d 859 (CCPA 1962), for the proposition that it is erroneous to analyze claims based on “speculation as to the meaning of the terms employed and assumptions” as to their scope (In re Steele is also cited for this proposition in MPEP 2143.03 and 2173.06).

A representative claim, as separated into its constituent parts by the BPAI, recited:

An extract of plant material from family Euphorbaciae and species Croton

(1) that reduces at least one opioid-induced complication selected from the group consisting of[:] nausea, emesis, retching and itch,

(2) the extract at a concentration of 1mg/mL of 50% (v/v) ethanol/water having reduced UV absorbency of about at least 4.3 between the range of 390 nm and 430 nm relative to the absorbency within the same range for unextracted plant material.

The BPAI first construed the terms “extract” and “plant material” in the preamble of the claim. Consulting the specification, the BPAI found that it was clear that the application dealt with a solvent extraction process, so the term “extract” was construed to mean a solvent extracted portion of plant material from Croton. The BPAI construed “plant material” to mean any part of a plant. The BPAI then addressed “ambiguities” in feature (2).

During examination, the examiner found that feature (2) should be given no patentable weight, because it did not make clear the amount of Croton relative to the claimed composition. The BPAI disagreed, noting that feature (2) – though ambiguous – was intended to characterize UV absorbency (a parameter), which could properly define the recited extract.

The BPAI looked to the specification in its consideration of how a skilled artisan would interpret and apply feature (2). The specification described an extraction process in which latex or sap from Croton was mixed with an organic solvent in a 1:1 proportion and, separately, the specification described a relative absorbency of a “concentration of 1 mg of extracted latex to 1 mL of water.”  The specification further described the comparative UV absorbency of proanthocyanidin between the “parent latex” and the extract, noting that “the reduced proanthocyanidin content is quantifiable spectrophotometrically.”

The BPAI noted that, even with the benefit of such description, the claim did not tell a skilled artisan what the baseline should be for comparison of the extract’s UV absorbency. While the specification discussed comparison with a “latex,” the claim referred without antecedent basis to “unextracted plant material,” which could be any plant material. The BPAI noted that applicant presumably intended something broader than “latex,” when it selected the term “unextracted plant material” for its claim and, thus, refused to import a limitation from the specification. In the absence of specificity as to the baseline for comparison, the BPAI concluded that it was not possible to compare the claimed invention with the prior art.

While the ambiguity as to baseline was fatal, the BPAI also noted that, even if the baseline was limited to a “latex,” neither the claim nor the specification described the amount, concentration, or method of preparation of the “unextracted plant material.”

Further, the BPAI stated that the “reduced UV absorbency of about at least 4.3… relative to the absorbency… for unextracted plant material,” was unclear because no units for “4.3” were provided. The BPAI noted that, while the specification described a 4.3 “fold” reduction in absorbance, absorbency was also described in in terms of “absorbance units” or “AU” in the art.

Thus, the BPAI concluded that the claim was so unclear that it could not be interpreted to resolve issues raised on appeal with respect to the examiner’s prior art rejections.

 Takeaway: Claims reciting new or unconventional parameters can be useful tools for protecting new discoveries and improvements in existing technologies. Also, it can be difficult for competitors to quickly confirm freedom-to-operate/practice when confronted with claims reciting new or unconventional parameters. However, clarity in defining how new or unconventional parameters are measured is essential – both in the specification and the claims themselves. Extra, pre-filing review of parameter claim language is recommended, particularly when a US application is a translation of a prior application in a language other than English.

Judges: Torczon, Lane, Moore

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