Posted on

When an Examiner Can Use a Dictionary: Guidance from In Re Smith International

In In Re Smith International, the Federal Circuit stated that the broadest reasonable interpretation of a claim term must be consistent with the specification, as discussed in a previous post.  So does that have any effect on the Examiner’s ability to use extrinsic evidence, such as a dictionary definition, to interpret a claim term?  The two ex parte PTAB appeals discussed below cite In Re Smith Internationaland provide some guidance. In Ex parte Boeke, Appeal 2016-002873 (decided May 2018), the claim included “at least one discharge slot having a first portion that includes an oval geometry.”  The specification distinguished “oval” from “racetrack shape” with reference to Figures 4 and 5, reproduced below.  Specifically, the specification defined “oval” as having “no straight portions, see Fig. 5,” and defined “racetrack shape” as “ “includes two flat sides 90, 92, see discharges slots 80B of FIGS. 3 and 4.” The rejection was based on a racetrack-shaped…

Read more

Posted on

Coffin Patent Lives on after IPR

The Federal Circuit agreed with the Patent Trial & Appeal Board that the claim language “form a casket body” was a structural limitation, not an intended use, and affirmed the final written decision of PTAB finding that the inter parte review petitioner failed to demonstrate that the claims were unpatentable.  Matthews International Corp. v. Vandor Corp. (Fed. Cir., decided March 27, 2018). The patent at issue is US8,104,151 and claim 1 reads as follows, with emphasis added: 1. A casket arrangement having a first configuration and a second configuration, comprising: a bottom panel formed of a pliable material; side panels formed intrinsically with the bottom panel of the pliable material, each side panel including a lower section and an upper section foldably attached thereto, the lower section extending vertically upward from the bottom panel, the upper section in the first configuration extending upward from the lower section and in the…

Read more

Posted on

Broadest Reasonable Interpretation Has Limits

The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) recently put the United States Patent Trial and Appeal Board (“the Board”) on notice that the broadest reasonable interpretation of claims (“BRI”) is not without limits. U.S. Patent No. 6,249,876 (“the ‘876 patent”), owned by the Power Integrations, Inc. (“Power Integrations”), had its claims 1, 17, 18 and 19 rejected in an ex parte reexamination that was appealed to the Board. The Board, relying on an interpretation allowing additional elements to be disposed between “coupled” elements, supported the examiner’s rejection of the claims as anticipated under pre-AIA 35 U.S.C. §102(b). The Federal Circuit reversed the Board’s decision, labeling the claim construction as “unreasonably broad.” IN RE: POWER INTEGATIONS, INC. (Appellant), 2017-1304 (March 19, 2018). Claim 1 is set forth below to show its use of “coupled”: A digital frequency jittering circuit for varying the switching frequency of…

Read more

Posted on

Must Examiners Now Cite the Specification to Support Broadest Reasonable Interpretation?

The Patent Trial & Appeal Board applied In Re: Smith Int’l to limit the broadest reasonable interpretation of claim language in Ex parte David Ben Yair (Appeal 2017-002190, decided Jan. 10, 2018).  In this case, the claim is directed toward a composite suit including “an inner suit” and “an outer suit,” and the prior art discloses a single article of clothing including an outer layer and an inner layer. The PTAB agreed with the appellant that, based on the specification of the appealed application, the claims required two pieces of clothing. Based on this interpretation the PTAB reversed the prior art rejection. The relevant portion of the claim is as follows: 1. A composite suit for protection of a wearer’s body from heat, the composite suit comprising: an inner suit adapted to be positioned on the wearer’s body and covering at least a substantial portion of the wearer’s body, the…

Read more

Posted on

CAFC: “Reciprocate” and “Translate” are not Distinct Motions

In Smith & Nephew, Covidien v. Hologic, (Fed. Cir., 2018) the CAFC interpreted the claim phrase “simultaneously rotate, translate, and reciprocate” such that reciprocating includes a translating motion, but is not necessarily a distinct motion. The CAFC based this interpretation on both the plain and ordinary meaning of the terms “translate” and “reciprocate” and also on the text of the detailed description. Claim 1 recites: 1. A surgical instrument, comprising: a cutting member including an implement for cutting tissue; and a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member; wherein the drive includes a drive member attached to the cutting member, the drive member including a helical groove, and the drive includes a translation piece…

Read more