In In Re: Smith International, Inc., the CAFC held that the broadest reasonable interpretation of a claim term must correspond with what and how the inventor describes the invention in the specification. In this case, the CAFC held that the interpretation of the claim term “body” by the Examiner and the PTAB in the underlying ex parte reexamination may not have been inconsistent with the specification, but did arbitrarily include and exclude elements described in the specification and, thus, did not correspond to the specification. Based on the CAFC’s broadest reasonable interpretation of “body,” the CAFC reversed the rejections of all of the appealed claims.
The following is a representative claim:
28. An expandable downhole tool for use in a drilling assembly positioned within a well bore having an original diameter borehole and an enlarged diameter borehole, comprising:
a body; and
at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof and having angled surfaces that engage said body to prevent said arm from vibrating in said second position;
wherein said at least one arm is moveable between a first position defining a collapsed diameter, and a second position defining an expanded diameter approximately equal to said enlarged diameter borehole.
On appeal, the PTAB interpreted “body” as a generic term similar to the terms “member” or “element” and does not provide any structural specificity. The specification describes several separate elements including the body, a mandrel, a piston, a drive ring, etc., but since the claim did not include these elements and did not elaborate on the structure of the body, the PTAB concluded that it is reasonable to interpret the generic term “body” as including some of these other elements. Based on this interpretation, the PTAB upheld the Examiner’s rejection over a prior art reference.
Notably, the claim does not elaborate on term “body.” However, the CAFC noted that the rest of the specification does not use the term “body” as a generic body, and in contrast, consistently uses “body” as a separate component from other components such as a mandrel, a piston, and a drive ring. The CAFC stated that:
“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.”
The CAFC continued by stating that the broadest possible interpretation is not the same as the broadest reasonable interpretation. In this case, the Examiner and the PTAB arbitrarily chose which elements of the specification to include, and exclude, from the interpretation of what they considered to be a generic claim term, “body,” in order to arrive at a desired outcome. But this was inconsistent with the specification, which clearly and consistently identified the body and the other elements separately in the specification, so the CAFC concluded that it was unreasonable to interpret the body as a generic element that could include these separately described elements.
An interesting question arises from this case, especially in light of Cuozzo Speed Technologies, LLC v. Lee: Is this broadest reasonable interpretation standard applied in this case any different than the Phillips claim construction standard. An argument could be made that there is no difference between these two standards.