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“Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?
In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.” Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears. One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference. In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application. See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009).
A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit. In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim Read the rest of this entry »
