Broadest Reasonable Interpretation

Transcription

1 Broadest Reasonable Interpretation Li-Hua Weng November 15, 2017

2 What is Broadest Reasonable Interpretation? A standard USPTO uses to interpret claim limitations during patent examination The pending claims must be interpreted as broadly as their terms reasonably allow. In light of the specification as it would be interpreted by one of ordinary skill in the art.

3 An interpretation is reasonable IF Consistent with plain meaning of the term Consistent with the specification Consistent with an interpretation one of ordinary skill would reach

4 Why Broadest Reasonable Interpretation? To establish a clear record of what applicant intends to claim. To reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.

5 In re: Smith International, Inc September 26, 2017 Ex parte reexamination USPTO rejected claims based on a broad interpretation of body PTAB affirmed Federal Circuit found the interpretation of body unreasonable

6 US 6,732,817 concerns a downhole drilling tool for oil and gas operation.

7 Claim 28 An expandable downhole tool for use in a drilling assembly positioned within a wellbore 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; 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.

8 Description in the Specification expandable tool 500 having a generally cylindrical tool body 510 with a flowbore 508 extending therethrough and one or more moveable, nonpivotable tool arms 520.

9 Description in the Specification one or more pocket recesses 516, which include angled channels 518, are formed in the body 510 to provide a drive mechanism for the moveable tool arms 520 to move axially upwardly and radially outwardly into the expanded position in response to a hydraulic force due to the differential pressure of the drilling fluid between the flowbore...and the annulus.

10 Prior Art: WO00/31371 to Eddison

11 USPTO s Interpretation Body is a broad term that may encompass other components such as mandrel and cam sleeve Only the term body is recited in the claims without further limiting features The specification does not define the term body nor prohibits the examiner s broad reading of it

12 PTAB s Decision the term body is a generic term such as member or element that by itself provides no structural specificity. Although the specification describes the body as a discrete element separate from other elements, the specification does not define the term body or preclude the Examiner s interpretation

13 PTAB s Decision The claims essentially recite only a body and the movable cutting arms Other components, such as a mandrel, are not recited in the claims. the term body may be interpreted as the overall portion or portions of the downhole tool that define the bore and may include one or more other elements.

14 Federal Circuit Just because the specification does not in and of itself proscribe the Examiner s construction does not mean an interpretation is reasonable. While some of the claims recite a broad term body without further elaboration on what the term body encompasses, the remainder of the specification does not use the term as a generic body.

15 The specification consistently describes the body as a component distinct from others, such as the mandrel, piston, and drive ring.

16 How to Determine If an Interpretation Is Reasonable? The correct inquiry is whether the broadest reasonable interpretation is in light of the specification, not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.

17 A Reasonable Interpretation IS NOT an interpretation that is not inconsistent with the specification. IS an interpretation that corresponds with what and how the inventor describes his invention in the specification.

18 Following Board s logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise.

19 In re: LF Centennial Limited June 29, 2016 US 8,079,311 A TV support and mounting kit for mounting a TV in three different configurations involving a console.

20 The issue is how to interpret short spine

21 Claim 1 A flat panel television console and support kit for use in a plurality of different user assembled configurations comprising:.. a first short spine having a height which extends from a floor to said upper shelf support, said first short spine forming a structural component of said console assembly when said first short spine is secured to said upper and lower shelf supports of said console assembly..

22 USPTO s Interpretation A short spine 62 is described as reaching from the ground to the top of the console. Because a side panel does the same, a side panel can be a spine. PTAB allowed the spine to be interpreted as a leg or side panel of the console

23 Prior art reference: US 2007/ to Saxton et al.

24 LF Centennial s arguments Spine in its ordinary non-technical meaning is the spinal or vertebral column; backbone or any backbone like part. The meaning distinguishes it from a side panel or leg and the intrinsic record in this case confirms that distinction.

25 Federal Circuit The specification plainly distinguishes between the spine and the side panels. The figures show the spine as a piece distinct from the side panels. The specification confirms that the spine and side panels cannot be equivalent.

26 Federal Circuit It employs a version of the fallacy of the undistributed middle: 1. a dog is a four-legged pet 2. a cat is a four-legged pet. 3. Therefore, a dog is a cat. A common characteristic of spine and a side panel does not allow a conclusion that one can be the other. 26

27 Questions? 27