c13The 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:

In reaching our conclusion that the claims are not anticipated by Chaffee, we note that we do not agree with Appellant that the meaning of the term “pump body” must be construed in light of the prosecution history of the ‘469 patent and certain statements made therein by the Examiner (Appeal Br. 8-11). During proceedings before the PTO, claim are given their broadest reasonable interpretation in light of the specification and the ordinary meaning of the claim terms as they would be understood by a skilled worker. Prosecution history may at times be relevant as to how claim terms would be understood by the ordinary skilled worker. However, the Examiner is not necessarily an ordinary skilled worker, unless the evidence establishes so. Consequently, it is the Examiner’s evidence of the term’s meaning that is relevant to claim interpretation. We are not compelled to adopt his interpretation. The standards for claim interpretation during proceedings before the PTO and during litigation are different because during PTO prosecution claims can be amended, but during litigation they cannot. In re Zletz, 893 F.2d at 321-22.

(Ex Parte Team Worldwide at pages 10-11 — underlining added, bolded terms emphasized in original)

It is unclear why Phillips was not followed here as plain and ordinary meaning was at issue, not BRI. Likewise, it is equally perplexing how an Examiner cannot be one skilled in the art for plain and ordinary meaning purposes, yet somehow still be competent to apply claim rejections under 103? (i.e., from the perspective of one of skill in the art)

Even assuming the original examiner was advancing a meaning that was somehow not “plain and ordinary,” an agreement as to this meaning was demonstrated on the public record. As such, the Patentee would be held to such meaning in a district court proceeding under a Phillips analysis.

The PTO practice of selectively disregarding original prosecution history in patent reexamination continues to be a source of concern for Patentees and Third Parties alike.