2111


CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION IN LIGHT OF THE SPECIFICATION <


AMERICAN ACADEMY

See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.).

BIGIO
 
"[T]he PTO gives claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).

BUSZARD

“A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
 
CORTRIGHT

"Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach." In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). See also In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ("[I]t would be unreasonable for the PTO to ignore any interpretative guidance afforded by applicant’s written description.").
 

Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999).

 Prior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means ... [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’ ... Accordingly, the PTO’s interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art.

 Id. (internal citations omitted).

See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“the PTO's interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art.”);

Furthermore, “[p]rior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’”  In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (citation omitted). 

GENENTECH

 
"The operative word is reasonable: the PTO has no such obligation regarding unreasonable interpretations." Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1565 n.22 (Fed. Cir. 1994).

Morris

“[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

The USPTO is not required in the course of prosecution to interpret claims in the same manner as courts are required to during infringement proceedings. “It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

The question then is whether the PTO's interpretation of the disputed claim language is “reasonable.” Id. at 1055.

During examination, the PTO must interpret terms in a claim using "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
 
Some cases state the standard as “the broadest reasonable interpretation,” see, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993), others include the qualifier “consistent with the specification” or similar language, see, e.g., In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). “Since it would be unreasonable for the PTO to ignore any interpretive guidance afforded by the applicant's written description, either phrasing connotes the same notion: as an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

Phillips

The Examiner must therefore “determine[] the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp. , 415 F.3d 1303, 1316 (Fed.Cir.2005) (emphasis added) (quoting In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
 
Phillips, 415 F.3d at 1321 ("The patent system is based on the proposition that the claims cover only the invented subject matter.");

Moreover, “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips v. AWH Corp., 415 F.3d [1310]1303, 1314 (Fed. Cir. 2005) (en banc).
 
It is improper to read limitations into the claims from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).

 “[Although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). 
 
 
Prater

Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05, (CCPA 1969).

While claim terms are given their broadest reasonable interpretation during examination, that interpretation must be consistent with the specification. In re Prater, 415 F.2d 1393, 1404 (CCPA 1969).
 
SUITCO SURFACE

“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). “Construing claims broadly during prosecution is not unfair to the applicant (or, in this case, the patentee), because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (appeal from reexamination proceeding).4

While claims under examination are not normally limited to specific embodiments described in an application, the Examiner's "construction [must] be 'consistent with the specification, ... and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.'" In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010) (second emphasis added). That is, "[t]he broadest-construction rubric ... does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention," but "[r]ather, claims should always be read in light of the specification and teaching in the underlying patent [application]." Id. at 1260. 

YAMAMOTO

We recognize that during prosecution, claims are to be given their broadest reasonable interpretation in view of the specification. We, however, are reluctant to use the specification to construe claim language in a manner contrary to its unambiguous ordinary meaning. See, e.g., In re Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir. 1984) (explaining that applicants can correct errors in claim language and adjust claim scope by amending claims in prosecution).

ZLETZ

Appellant’s reliance on this purported prosecution disclaimer is unavailing. “[T]he PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Rather, the PTO is obligated to give claims their broadest reasonable interpretation not inconsistent with the remainder of the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”) (citations omitted)


I.   THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING IS INCONSISTENT WITH THE SPECIFICATION


II.   IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION


III.    “PLAIN MEANING” REFERS TO THE ORDINARY AND CUSTOMARY MEANING GIVEN TO THE TERM BY THOSE OF ORDINARY SKILL IN THE ART


ABBOTT

We are instructed that "claims under examination before the [U.S. Patent and Trademark Office] are given their broadest reasonable interpretation consistent with the specification." In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (citation omitted). However, [t]he broadest-construction rubric . . . does not give the [Examiner] an unfettered license to interpret claims to embrace anything remotely related to the claimed invention." In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).

PHILLIPS

Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc) (“[J]udges are free to consult dictionaries and technical treatises at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.”) (citation omitted);

 

REXNORD

Because a claim term should be construed consistently wherever it appears in a patent or application’s claims, see, e.g., Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently throughout the claims.”), we determine that the term “coupled” as used in the ’029 application’s claims means “joined” or “connected.”


SUITCO SURFACE


[U]nder the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011 ), and "must be consistent with the one that those skilled in the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is "unreasonably broad" and which does not "reasonably reflect the plain language and disclosure" will not pass muster.


Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).


IV.   APPLICANT MAY BE OWN LEXICOGRAPHER


ACTV
 
See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) "While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered..."

ALTIRIS

“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (internal quotations and citations omitted).

A two-part test has been established for determining if the steps of a method claim that do not otherwise recite an order must nonetheless be performed in the order in which they are written. First, we look to the claim language to determine if, as a matter of logic or grammar, the recited steps must be performed in the order written. “If not, we next look to the rest of the specification to determine whether it ‘directly or implicitly requires such a narrow construction.”’ Altiris Inc. v. Symantec Corp. , 318 F.3d 1363, 1369-70 (Fed. Cir. 2003) (quoting Interactive Gift Express, Inc. v. CompuServe Inc. , 256 F.3d 1323, 1343 (Fed. Cir. 2001)) (emphasis in original). If not, the sequence in which such steps are written is not a requirement of the claim. Id

 In determining whether a claimed method must be performed in a particular sequence, “[f]irst, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.”  Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003).  


BROOKHILL-WILK 1

Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).
 
See also Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (citing Tex. Digital Sys. Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002)) (“If more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all consistent meanings”).

CHEF AMERICA

Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004) (Ordinary, simple English words whose meaning is clear and unquestionable, absent any indication that their use in a particular context changes their meaning, are construed to mean exactly what they say.)

In the absence of an explicit definition by Appellants, we accord the claim terms "unique" and "and" their ordinary and plain meaning unless the plain meaning is inconsistent with Appellants's own specification.  Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004) (ordinary, simple English words whose meaning is clear and unquestionable, absent any indication that their use in a particular context changes their meaning, mean exactly what they say.)


E-Pass


The challenge is to interpret claims in view of the specification without unnecessarily importing limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

Limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (Limitations not explicit or inherent in the language of a claim cannot be imported from the specification.).
 
FERGUSON
 
It is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the “ordinary” and the “customary” meaning of the terms in the claims. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).

INTELLICALL
 
See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change” in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).
 
LIEBEL

See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim).

MERCK

The Examiner's interpretation would likewise render the expressly recited claim term "probabilistic" superfluous.  Such an interpretation would be contrary to the canons of claim construction.  "A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so." Merck & Co. v. Teva Phams. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005). We therefore find the Examiner's claim construction of  "a probabilistic model" unreasonable broad.

MULTIFORM

Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).

Phillips

“[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted). The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1313.

While a general-usage dictionary can be helpful in understanding claim language, a general dictionary “cannot overcome art-specific evidence of the meaning of a claim term.” Phillips v. AWH Corp., 415 F.3d 1303, 1318, 1322 (Fed. Cir. 2005) (citations and internal quotations omitted).
 
"When different words or phrases are used in separate claims, a difference in meaning is presumed." Nystrom v. TREX Co., Inc., 424 F. 3d 1136, 1143 (Fed. Cir. 2005) Under the doctrine of claim differentiation, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips v. AWH Corp., 415 F. 3d 1303, 1315 (Fed. Cir. 2005).  This presumption is "especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." Sunrace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F. 3d 1298 (Fed. Cir. 2003).

Rapoport
 
Thus, the claim requires treatment of a chronic immune disease, and not a symptom of such a disease, for example the symptom of chronic fatigue in CFS. See Rapoport v. Dement, 254 F.3d 1053, 1059-60 (Fed. Cir. 2001) (noting that "‘treatment of sleep apnea[]’" was properly interpreted as limited to the underlying apnea itself; claim term did not include treatment of anxiety that can occur secondary to sleep apnea).

Superguide

We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).

See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“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.”)

THORNER

To act as his own lexicographer, “the patentee must ‘clearly express an intent’ to redefine the term.” See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (internal citations omitted).

VITRONICS

The claim construction analysis begins with the words of the claim. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
 
Zletz

When the specification states the meaning that a term in the claim is intended to have, the claim is examined using that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art.In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).

2111.02 Effect of Preamble [R-3] 

BELL, ROWE, CORNING GLASS WORKS, KROPA


We are not persuaded by Appellants’ argument that the language of the preamble is a limitation on the claim. “[A] claim preamble has the import that the claim as a whole suggests for it.” Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). In instances where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (citing Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). Conversely, where 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. Id. (citing Bell Communications, 55 F.3d at 620; Kropa v. Robie, 187 F.2d 150 (1951).


The effect preamble language is to be given is determined by reviewing the entirety of the Appellants' disclosure to gain an understanding of what the Appellants actually invented and intended to encompass by the claim. See Corning Glass Works v. Sumitomo Electric, 868 F.2d 1251, 1257 (Fed. Cir. 1989).


>

I.    < PREAMBLE STATEMENTS LIMITING STRUCTURE


II.    < PREAMBLE STATEMENTS RECITING PURPOSE OR INTENDED USE


CATALINA

We also note that the nominal recitation to a “system” in the preamble does not limit the body of the claim as it only states the invention’s purpose or intended use. See Catalina Marketing Int’l, Inc., v. Coolsavings.com Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).

Cf. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (“[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.”).

Our reviewing court has held that the patentability of an apparatus claim " depends on the claimed structure, not on the use or purpose of that structure." Catalina Marketing Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). ("It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.")
 
Corning Glass Works

The effect preamble language is to be given is determined by reviewing the entirety of the Appellants’ disclosure to gain an understanding of what the Appellants actually invented and intended to encompass by the claim. See Corning Glass Works v. Sumitomo Electric, 868 F.2d 1251, 1257 (Fed. Cir. 1989).

CRUCIFEROUS SPROUT


“It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior

art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted).


KROPE 

The subject matter of claim 204 is not all magnetic particles; rather, claim 204 covers magnetic particles that are part of a mascara product. Therefore, the preamble serves to further define the structure of the article claimed. See Kropa v. Robie, 187 F2d 150, 152 (CCPA 1951).

Based on these facts, we determine that the preamble breathes life and meaning into the claim that provides completeness to the claim and thus must be considered a limitation of the claim. In re Wertheim, 541 F.2d 257, 269 (CCPA 1976) (citing Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951)).

METABOLITE


A “preamble may provide context for claim construction, particularly, where … that preamble’s statement of intended use forms the basis for distinguishing the prior art in the patent’s prosecution history.” Metabolite Labs., Inc. v. Corp. of Am. Holdings, 370 F.3d 1354, 1358-62, 71 USPQ2d 1081, 1084-87 (Fed. Cir. 2004).


PITNEY BOWES
 
If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is necessary to give life, meaning, and vitality to the claim, then the claim preamble should be construed as if in the balance of the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
 
Rowe

“[I]f the preamble merely state[s] a purpose or intended use and the remainder of the claim completely defines the invention independent of the preamble,” it does not constitute a limitation. Lipscomb’s Walker on Patents, 3rd Edition, Vol. 3, § 11.11 at p. 361 (citing Marston v. J.C. Penney Co., 353 F.2d 976, 986 (4th Cir. 1965)); see also Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (An element initially recited in the preamble is thereafter fully incorporated into the body of the claim so as to breathe life and breath into it by setting forth the complete combination).
 
ROWE

See also Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (noting that when the claim preamble recites structural limitations of the claimed invention, the USPTO must give effect to that usage).

SCHREIBER


"It is well settled that the recitation of a new intended use for an old product does not make a claim to

that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We conclude that this is true whether an intended use recitation is recited in the preamble or, as in the present case, in a wherein clause. See Griffin v. Bertina, 283 F.3d 1029, 1034 (Fed. Cir. 2002).


 
STENCEL
 
“An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim's preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id.

Whether or not a statement of "intended purpose constitutes a limitation to the claims is, as has been long established, a matter to be determined on the facts of each case in view of the claimed invention as a whole." In re Stencel, 828 F.2d 751, 754-55 (Fed. Cir. 1987); see also C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1350 (Fed. Cir. 1998) (holding that preamble did not limit claim scope where it merely stated intended use or purpose of the invention).


 
Sinex

Merely stating an intended use for an apparatus is not sufficient to distinguish the apparatus from the prior art. In re Sinex, 309 F.2d 488, 492 (CCPA 1962).

2111.03 Transitional Phrases [R-3]

AK STEEL 

The phrase “consisting essentially of” in a patent claim “has long been understood to permit inclusion of components not listed in a claim, provided that they do not ‘materially affect the basic and novel properties of the invention.’” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1239 (Fed. Cir. 2003) (citations omitted)

BOND
 
GENENTECH
 
Although the PTO emphasizes that it was required to give all “claims their broadest reasonable construction” particularly with respect to [the] use of the open-ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term comprising ... means that the named elements are essential, but other elements may be added”), this court has instructed that any such construction be “consistent with the specification, ... and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).
 

CRISH


In support of the holding, the Examiner cites and relies on In re Crish, 393 F.3d 1253 (Fed. Cir. 2004). Answer, page 15. ...


The Federal Circuit rejected Crish’s proposed narrow construction of the claim on appeal seeking to limit the claim to nucleotides 521 to 2473 noting the presence of the transition term “comprising” and observing that the “at least a portion” language “implies that the pending claims contemplate additional nucleotides.” 393 F.3d at 1257. The “consists” was held to limit only the “portion”. As a result, the claim on appeal could include other nucleotides and was held to be unpatentable over the prior art.  


CRYSTAL

The transitional term “comprising” “creates a presumption that the recited elements are only a part of the device, [and] that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001).

GRAY

DAVIS

NORIAN

Appellant is their own lexicographer, and by using the transitional phrase “consist of,” Appellant has made a conscious choice to exclude systems that gather information from resources other than those listed. See In re Gray, 53 F.2d 520, 521 (CCPA 1931). While there are two exceptions to such exclusions, neither are applicable here. See Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (impurities are not excluded); Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32 (Fed. Cir. 2004) (items unrelated to the group are not excluded).

“It is . . . well understood in patent usage that ‘consisting of’ is closed-ended and conveys limitation and exclusion.” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007) (citing Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (“‘consisting of’ is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim . . . [however] it does not limit aspects unrelated to the invention”); In re Gray, 53 F.2d 520 (CCPA 1931) (the use of the claim term “consists” is limited to the claim’s enumerated alloy metals without other elements, unlike the term “comprising” which permits the inclusion of other metals than those “claimed”).

De LAJARTE


HOFFMAN

However, the burden is on Appellants to show what the basic and novel characteristics are and how they would be materially changed by the ingredient of the reference sought to be excluded from inclusion by Appellants’ use of this term. See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964); Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).

 Appellant bears the burden of: (1) showing the basic and novel characteristics of their claimed invention, and (2) establishing how those characteristics would be materially changed by any allegedly excluded component of an applied reference. See In re DeLajarte, 337 F.2d 870, 873 74 (CCPA 1964). 

Herz

"[T]he phrase 'consisting essentially of' limits the scope of a claim to the specified ingredients and those that do not materially affect the basic and novel characteristic(s) of a composition." In re Herz, 537 F.2d 549, 551-52 (CCPA 1976)(emphasis omitted)(quoting In re Janakirama-Rao, 317 F.2d 951 (CCPA 1963)).

“[C]laims are given their broadest reasonable construction consistent with the specification. . . . [A]n applicant who has not clearly limited his claims is in a weak position to assert a narrow construction. Therefore, in construing the phrase ‘consisting essentially of’ in appellants’ claims, it is necessary and proper to determine whether their specification reasonably supports a construction that would include additives such as [those in the prior art].” In re Herz, 537 F.2d 549, 551 (CCPA 1976).

JANAKIRAMA
 
The transitional phrase “consisting essentially of” has long been understood to “open[] the claims to the inclusion of ingredients which would not materially affect the basic and novel characteristics of appellant’s compositions as defined in the balance of the claim.” In re Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963).
 
MANNESMANN

When the phrase “consisting of” occurs in the body of the claim, it limits only the element set forth in that clause. Mannesmann DeMag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986).

Cf., e.g., Mannesmann DeMag Corp. v. Engineered Metal Products co., Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986) ("The district court correctly observed that the phrase "consisting of" appears in clause (a), not the preamble of the claim, and thus limits only the element set forth in clause (a). The court correctly declined to read this usage of 'consisting of' as excluding all other elements from the claim as a whole"; emphasis added).

MARS

See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004) (transitional, open-ended terms “comprising” and “including” are synonymous).


PPG

Concerning the first issue and the claim term “consisting essentially of”, it is well settled that the term “consisting essentially of” is interpreted as allowing for the inclusion not only of those ingredients specifically recited, but also those that do not materially affect the basic and novel characteristics of a claimed invention. PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998); 
 
[T]he specification must be consulted to determine whether the applicant “defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.” PPG Indus. Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).



OTHER TRANSITIONAL PHRASES

AFG

“Consisting of” is a closed transitional phrase that is “understood to exclude any elements, steps, or ingredients not specified in the claim.” AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001).


LAMPI

However, consistent with the ‘390 Decision, we do not impart any specific structure from Figures 10A-12 as being required for the claimed channel or portion of the medical line to be “irregularly shaped.” See Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1381 (Fed. Cir. April 1, 2011) (citing Lampi Corp. v. Am. Power Prods., 228 F.3d 1365, 1378 (Fed. Cir. 2000) (concluding that the embodiment drawings did not compel a conclusion that the written description is so narrowly tailored to be limited to the embodiments depicted in the drawings).



When "the written description makes clear that 'adapted to,' as used in the [patent] application, has a narrower meaning, viz., that the  claimed [machine] device is designed or constructed to be used" in a particular manner, the "adapted to" clause limits the claims. In re Giannelli, 739 F.3d 1375, 1378 (Fed. Cir. 2014). 

See, e.g., In re Giannelli, 739 F. 3d at 1380 ("the relevant question before the Board was whether the apparatus described in the [prior-art] patent was "'made to," "designed to," or "configured to,"' allow the user to perform [ the recited function]") accord In re Man Machine Interface Technologies, 822 F. 3d 1282, 1286-87 (Fed. Cir. 2016). Thus, the Examiner's finding cannot be sustained.

GRIFFIN

The determination of whether recitations or clauses introduced by terms such as “wherein,” “whereby,” or, in the present appeal, “thereby” result in affirmative claim limitations which are to be given patentable weight depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034 (Fed. Cir. 2002) (finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”).

see generally Griffin v. Berlina, 285 F.3d 1029, 1034 (Fed. Cir. 2002) (affirming interpretation that a wherein clause was limiting because it provided "meaning and purpose to the manipulative steps" of the claim).

"It is well settled that the recitation of a new intended use for an old product does not make a claim to

that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We conclude that this is true whether an intended use recitation is recited in the preamble or, as in the present case, in a wherein clause. See Griffin v. Bertina, 283 F.3d 1029, 1034 (Fed. Cir. 2002).


Hoffer Minton

The determination of whether a "whereby" clause or similar clause1 is a limitation in a claim depends on the specific facts of the case. Hoffer v. Microsoft Corp. , 405 F.3d 1326, 1329 (Fed. Cir. 2005). In Hoffer, the court held that when a "whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention." Id.

1 See MPEP 2111.04 [R-3] stating that an "adapted to" clause is subject to a similar claim interpretation.

See the Manual of Patent Examining Procedure (MPEP) § 2111.04 citing Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) (When a “‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.”).

In re Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005), the court held that when a “‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003)) that a “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Id.

2111.05   Functional and Nonfunctional Descriptive Material [R-9]

KAO

Cf. In re Huai-Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“Maloney's express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed ‘food effect’ adds nothing of patentable consequence.”); see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).

KING

When the only distinguishing factor between a method and the prior art is the nature of information being manipulated, the invention is not patentable unless the information has a “new and unobvious functional relationship” with the otherwise known method. See King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (quoting In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004)).

We also emphasize that Appellants’ argument is undermined by legal precedent that, “[t]o anticipate, the prior art need only meet the inherently disclosed limitation to the extent the patented method does.” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1276 (Fed. Cir. 2010). That is, based on the record before us, it is reasonable to believe the compositions of Sellstrom inherently exhibit surface isotherms to the same extent as the identical compositions claimed by Appellants.

The particular labels attached to the codes that are associated are discernable only in the mind of the beholder, and such labels are afforded no patentable weight. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010). (“If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”)

On appeal, the Examiner also directs our attention to King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010). The Examiner finds that "Applicant's step (a) in claim 23 of a physician or dental professional 'informing' a patient to orally administer a carbonated beverage for its inherent property of treating dental erosion is not patentable per the King Pharm. holding." Ans. 8. distinguishing language," in contrast to Jansen. Decision 6 (quoting Office Action dated June 6, 2005, at 2).


The facts in King, however, are different from the facts in this case. In King, the following claim limitation was at issue: "'informing the patient that administration of a therapeutically effective amount of metaxalone in a pharmaceutical composition with food results in an increase in the maximal plasma concentration ( Cmax) and extent of absorption ... compared to administration without food."' King, 616 F.3d at 1277 (emphasis added). The Court found that taking metaxalone with food was known in the art. King, 616 F.3d at 1275. Thus, the Court found that "[i]nforming a patient about the benefits of a drug in no way transforms the process of taking the drug with food. Irrespective of whether the patient is informed about the benefits, the actual method, taking metaxalone with food, is the same." King, 616 F.3d at 1279.


In this case, claim 23 recites a "directing" step, not an "informing" step as in King. The method recited in claim 23 comprises, inter alia, the step of "a physician or dental profession directing a human, in need thereof . .. , to orally administer an effective amount of [the claimed beverage composition] at least once daily for the purpose of treating dental erosion."


I.   Determining Whether a Functional Relationship Exists


A.   Evidence For a Functional Relationship


B.   Evidence Against a Functional Relationship


II.   Functional Relationship Must be New and Unobvious


III.   Machine-Readable Media


Gulack
 
Descriptive material is not entitled to patentable weight unless there is a functional relationship to the substrate. In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983); Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal No. 2006-1003, aff’d Fed. Cir. R. 36 June 12, 2006). Here, a data structure is only an arrangement of data that bears no functional relationship to the substrate (computer readable medium) that stores the data and it is not entitled to patentable weight.
 
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). In dealing with printed matter, “the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.” Id. at 1386.
 

KING

See In re Huai-Hung Kao, 639 F.3d 1057, 1072-73 (Fed. Cir. 2011) (“Just as in King Pharmaceuticals, the informing step does not ‘transform[ ] the process of taking the drug.’” (quoting King Pharm., 616 F.3d at 1279)).

Lowry
 
The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential informative), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006);
 
Non-functional descriptive material refers to data content that does not exhibit a functional interrelationship with the substrate and does not affect the way the computing processes are performed. See MPEP § 2106.01. In a precedential decision, an expanded Board panel recently held that elements that do not affect the claimed process are non-functional material and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887 (BPAI 2008) (precedential).
 
Ngai
 
Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d at 1339.
According to current Office policy, computer programs per se are not considered patentable subject matter under §101, as they are in themselves purely non-functional descriptive constructs. See U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at 2, available at http://www.uspto.gov/patents/law/comments/2009-08-25_interim_101_instructions.pdf.
Also see MPEP § 2106.01 (I), citing In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
 
Warmerdam
 
Claims directed to data structures per se are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).



Comments