In In Re: Nordt Development Co., the CAFC vacated the Board’s finding that the claim term “injection molded” was a product-by-process limitation that was not afforded patentable weight.
Claim 1 includes many instances of “injection molded.” One example, is “a hinge mechanism comprising an injection molded component and injection molded first and second arm components.” The specification includes two paragraphs describing “injection molded” in a section titled “Preferred Manufacturing Methods.” In that section, the specification describes several structural features and interconnections that result from injection molding.
During prosecution, the Appellant amended the claims to claim “injection molded” in an attempt to overcome a novelty rejection over a prior art disclosing a fabric component. The Examiner did not afford patentable weight to “injection molded” and upheld the rejection. On appeal, the Board affirmed the Examiner’s rejection.
In contrast to the Board, the CAFC held that “injection molded” connotes structure, and cited In re Garnero, 412 F.2d 276 (CCPA 1969) for support. As one example, the CAFC noted that the specification demonstrates, at very least, that the “injection molded” product is an integral structure. The Court also noted that “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.” 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365 (Fed. Cir. 2003). The Court went on to cite a number of cases in which such terms were construed to be structural.
Anecdotally, it appears that this type of product-by-process interpretation is being used more often by the USPTO. Another example is described in a recent post regarding an IPR final written decision in which the PTAB construed “molded” as a product-by-process limitation. These cases are reminders that a structural definition in the specification for such claim terms may be useful in arguing that the claim term is structural, as opposed to product-by-process. On that note, the Court in In Re: Nordt also noted other words that may be construed as structural include “intermixed,” “ground in place,” “press fitted,” “etched,” and “welded.”