not in mpep

CLAIM INTERPRETATION - cases cited in BPAI decisions that are not in MPEP 


However, if the words of limitation can connote with equal force a structural characteristic of the product or a process used to obtain it, then the limitation is commonly interpreted in its structural sense. See, e.g., 3M Innovative Props. Co. v. Avery Dennison Corp. , 350 F.3d 1365, 1371 (Fed. Cir. 2003) (“[E]ven 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….”); Hazani v. U.S. Int’l. Trade Com’n. , 126 F.3d 1473, 1479 (Fed. Cir. 1997) (holding that claims to a plate having a “chemically engraved” surface are best characterized as pure product claims, since the “chemically engraved” limitation, read in context, describes the product more by its structure than by the process used to obtain it); 
[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation. See Bell Communications, 55 F.3d at 620; Kropa v. Robie, 187 F.2d 150 (1951).

Claims are construed with an eye toward giving effect to all terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous).
Claim language, however, “should not [be] treated as meaningless.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006).

However, the use of different terms in a claim indicates, absent evidence to the contrary, that different elements are required. Cf. CAE Screen Plates, Inc. v. Heinrich Fiedler GMBH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”) (citation omitted).
The following helpful analysis concerning "about" in claims appears in Cohesive Techs., Inc. v. Waters Corp. , 543 F.3d 1351, 1368 (Fed. Cir. 2008): The word about does not have a universal meaning in patent claims, and its meaning depends on the technological facts of the particular case. When about is used as part of a numeric range, the use of the word about avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context. In determining how far beyond the claimed range the term about extends the claim, we must focus on the criticality of the numerical limitation to the invention.

Further, it is also necessary for the Examiner to properly construe what an applied reference fairly teaches or discloses. See, e.g., In re Fracalossi and Wajer, 681 F.2d 792 (CCPA 1982).

“The doctrine of claim differentiation creates a presumption that each claim in a patent has a different scope . . . . The difference in meaning and scope between claims is presumed to be significant to the extent that the absence of such difference in meaning and scope would make a claim superfluous.” Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005) (internal quotation marks and citations omitted).
Moreover, the Examiner must consider all of the claim limitations in setting forth a rejection over the prior art. See, e.g., In re Geerdes, 491 F.2d 1260, 1262-63 (CCPA 1974) (in considering grounds of rejection, “every limitation in the claim must be given effect rather than considering one in isolation from the others.”).
“[T]he patent drafter is in the best position to resolve the ambiguity in the patent claims.” Halliburton Energy Servs, Inc. v. M-I LLC, 514 F.3d 1244 at 1255 (Fed. Cir. 2008).
In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (use of "about" in a claim shows that the applicant does not intend to limit the claimed ranges to their exact end-points).


see also In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”).


However, it is improper to “import limitations into claims from examples or embodiments appearing only in a patent's written description, even when a specification describes very specific embodiments of the invention or even describes only a single embodiment, unless the specification makes clear that ‘the patentee . . . intends for the claims and the embodiments in the specification to be strictly coextensive.’” JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005) (quoting Phillips, 415 F.3d at 1323). It is also improper to confine the claims to the specific embodiments disclosed in the specification. Phillips, 415 F.3d at 1323.

"About" generally means "approximately." Merck & Co., Inc. v. Teva Pharms. USA, 395 F.3d 1364, 1367 (Fed. Cir. 2005).


The generic terms “mechanism,” “means,” “element,” and “device,” typically do not connote sufficiently definite structure. Massachusetts Institute of Technology and Electronics For Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Sanada v. Reynolds, 67 U.S.P.Q.2d 1459, 1462 (BPAI 2003).


“Such broadening usages as ‘about’ must be given reasonable scope; they must be viewed by the decisionmaker as they would be understood by persons experienced in the field of the invention. Although it is rarely feasible to attach a precise limit to ‘about,’ the usage can usually be understood in light of the technology embodied in the invention.” Modine Manufacturing Co. v. U.S. ITC, 75 F.3d 1545, 1554 (Fed. Cir. 1996).

Generally stated, “terms appearing in a preamble may be deemed limitations of a claim when they give meaning to the claim and properly define the invention.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) . . . .


Perkin-Elmer Corp. v. Westinghouse Elec. Corp. , 822 F.2d 1528, 1532 (Fed. Cir. 1987) (the court can not ignore a plethora of meaningful limitations).
Unlike accused infringers in inter partes infringement cases (or for that matter parties in interference cases), the USPTO has no means for making and comparing properties or characteristics of compositions. Charles Pfizer & Co., Inc. v. F.T.C., 401 F.2d 574, 579 (6th Cir. 1968).

A claim term that does not use “means” triggers the rebuttable presumption that 35 U.S.C. § 112, sixth paragraph, does not apply, but the presumption is rebutted by a showing that the claim element recites a function without also reciting sufficient structure for performing that function. Ex parte Rodriguez, 92 U.S.P.Q.2d 1395, 1401 (BPAI 2009) (precedential).
Also, when a claim uses the term “means” to describe a limitation, a presumption exists that the inventors used the term to invoke 35 U.S.C. § 112, sixth paragraph, and the presumption can be rebutted when the same claim recites sufficient structure to perform the claimed function in its entirety. Ex parte Rodriguez, 92 U.S.P.Q.2d at 1401.

Accordingly, “[c]laims are not to be read in a vacuum[;] while it is true they are to be given the broadest reasonable interpretation during prosecution, their terms still have to be given the meaning called for by the specification of which they form a part.” In re Royka, 490 F.2d 981, 984 (CCPA 1974).
See In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009), and case cited therein (the term comprising "simply means that the device may contain elements in addition to those explicitly mentioned in the claim").

An overly broad interpretation, as the Examiner suggests, would eviscerate the meaning of the phrase integrally formed because it would mean that all components of APA’s channel 14 as modified by the boss of Matsubara or Schwartztrauber are integrally formed merely because they are interconnected to each other in some manner. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous).


“[W]ith original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re Suitco, No. 2009-1418, 2010 WL 1462294, at *3 (Fed. Cir. Apr. 14, 2010) (internal quotations and citation omitted). When a claim uses the open-ended term, “comprising,” “this court has instructed that any such construction be consistent with the specification . . . and that the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” Id. at *4 (citations, internal quotation marks, and emphasis omitted


“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
The accepted definition of the term “connected” is restricted to neither a direct nor an indirect connection, and it is therefore applicable to an indirect connection. Ullstrand v. Coons, 147 F.2d 698, 700, 64 USPQ 580, 581 (CCPA 1945).

A proper claim interpretation gives full effect to the recitation of two distinct elements in the claimed structure. Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561-62 (Fed. Cir. 1991).
Thus, "each claim does not necessarily cover every feature disclosed in the specification. When the claim discloses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features." Ventana Med. Sys., Inc. v. Biogenics Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2004)

“[E]very limitation positively recited in a claim must be given effect in order to determine what subject matter that claim defines.” In re Wilder, 429 F.2d 447, 450 (CCPA 1970).
2111.02 Effect of Preamble [R-3]
See also Am. Med. Sys., Inc. v. Biolitec, Inc., No. 2009-1323, slip op. at 9 (Fed. Cir. Sept. 13, 2010) (citations omitted) (noting that a preamble that “merely gives a descriptive name to the set of limitations in the body of the claim that has completely set forth the invention” has no separate limiting effect).
Additionally, even if the preamble to the “system” were given weight and thus literally fit within the machine or an article of manufacture categories set forth in § 101, that alone is not sufficient to determine if claim 8 recites statutory subject matter. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).