Unreasonable to Extend Claim Scope to Described Prior ArtPerhaps mindful of the last patent reexamination appeal that related to flooring technology, yesterday the BPAI reversed an Examiner claim construction as unreasonable. As a reminder, claims in patent reexamination are accorded a broadest reasonable interpretation (BRI) consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).Since the Suitco decision, (linked above), the Office has been making more of an effort to ensure that claims are not broadened to a point of inconsistency with the specification. There is a delicate balance between incorporating limitations from the specification to the claims, and reading claims consistent with the specification. Yesterday’s decision, illustrates one helpful constraint on BRI, namely, clear disavowal of the patent specification.The decision, ex parte Jorgen J. Muller Jr., (here) revolved around an injection molded floor panel. Specifically, the claims were directed to structure of the panel that helped eliminate undesirable “sink marks” of the tile that otherwise form when the tiles are curing. In this regard, the claims recited an area defined by each of the one or more structures is contained within and positioned directly above an area defined by the one or more support members.A figure of the patent is reproduced below showing the area defined by the support members.The area defined by the upper structures 220 are entirely contained within, and aligned with, an area defined by the lower support members 215 and 217.Yet, the Examiner interpreted the limitation, “an area” of the structure is “contained within” an area defined by the support member, as requiring that only a part of the structure be contained within the support member. Thus, the Examiner interpreted the claim to permit the top structures to extend outside the area of the bottom support members.The Board noted that the Examiner interpretation was inconsistent with the specification, and therfore, unreasonable as clearly embracing the prior art discussed in the specification of the patent. The prior art discussed as suffering from the “sink mark” problem was illustrated in the patent as Fig. 3B below.The Board noted that, with regard to Fig. 3B:[T]he Examiner’s interpretation of the disputed limitation corresponds to the configuration of the prior art tile depicted in Figure 3. This configuration is discussed above as resulting in sink marks. It is not reasonable to read the claims as reading on a prior art configuration which was expressly addressed and remedied by the ‘592 patent.The Board then continued to explain that one of skill in the art would understand the claimed area to be within the vertical alignment of the structures and support members.There are few bright lines in interpreting claims under the BRI standard. However, one seems to be that any interpreation embracing disavowed claim scope of a patent specification is unreasonab
Perhaps mindful of the last patent reexamination appeal that related to flooring technology, yesterday the BPAI reversed an Examiner claim construction as unreasonable. As a reminder, claims in patent reexamination are accorded a broadest reasonable interpretation (BRI) consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).
Since the Suitco decision, (linked above), the Office has been making more of an effort to ensure that claims are not broadened to a point of inconsistency with the specification. There is a delicate balance between incorporating limitations from the specification to the claims, and reading claims consistent with the specification. Yesterday’s decision, illustrates one helpful constraint on BRI, namely, clear disavowal of the patent specification.
The decision, ex parte Jorgen J. Muller Jr., (here) revolved around an injection molded floor panel. Specifically, the claims were directed to structure of the panel that helped eliminate undesirable “sink marks” of the tile that otherwise form when the tiles are curing. In this regard, the claims recited an area defined by each of the one or more structures is contained within and positioned directly above an area defined by the one or more support members.
A figure of the patent is reproduced below showing the area defined by the support members.
The area defined by the upper structures 220 are entirely contained within, and aligned with, an area defined by the lower support members 215 and 217.
Yet, the Examiner interpreted the limitation, “an area” of the structure is “contained within” an area defined by the support member, as requiring that only a part of the structure be contained within the support member. Thus, the Examiner interpreted the claim to permit the top structures to extend outside the area of the bottom support members.
The Board noted that the Examiner interpretation was inconsistent with the specification, and therfore, unreasonable as clearly embracing the prior art discussed in the specification of the patent. The prior art discussed as suffering from the “sink mark” problem was illustrated in the patent as Fig. 3B below.
The Board noted that, with regard to Fig. 3B:
[T]he Examiner’s interpretation of the disputed limitation corresponds to the configuration of the prior art tile depicted in Figure 3. This configuration is discussed above as resulting in sink marks. It is not reasonable to read the claims as reading on a prior art configuration which was expressly addressed and remedied by the ‘592 patent.
The Board then continued to explain that one of skill in the art would understand the claimed area to be within the vertical alignment of the structures and support members.
There are few bright lines in interpreting claims under the BRI standard. However, one seems to be that any interpreation embracing disavowed claim scope of a patent specification is unreasonable.