English
Examiner Comments in Prosecution History Discounted as Unskilled?
The relevance of original patent application prosecution history in patent reexamination remains an unsettled issue at the USPTO. As we discussed last month, the MPEP mandates the application of Phillips v. AWH Corp., 415 F.3d 1303; (Fed. Cir. 2005) (en banc) with regard to according a plain meaning to claim terms.Yet the broadest reasonable interpretation (BRI) looks exclusively at the specification.
Last week, the BPAI addressed the use of prosecution history in according a plain meaning in Ex parte Team Worldwide Corporation (Appeal 2010-002223). In doing so, the Board reversed a rejection applied in reexamination based upon the plain meaning of “body.” In the Patentee’s brief, it was pointed out that the original patent application examiner advanced a similar understanding of the term “body” as that argued by the Patentee in the later patent reexamination. While the Board ultimately adopted the Patentee interpretation, it refused to consider the prosecution history, explaining: Read the rest of this entry »
