Board of Patent Appeals Issues Key Claim Construction Decision

Written by: Mark Terry

Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner’s rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others.

At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an “interconnected network”. The applicant argued that the terms “interconnect network” and “wireless network” are not synonymous as pertains to a prior patent issued to Elliott (US 6,859,135 B1) in 2005. Unfortunately, the applicant failed to clearly make this distinction in the claims.

In the analysis section of the decision, the BPAI indicated comments made by the Patent Examiner, such as, “Appellant (applicant) seems to suggest that Elliott’s network is a wireless network and not an interconnected network because it is not a combination of wired and wireless network,” and that,” the issue of the interconnected network being wireless or wired is not at all claimed.” Oops! The BPAI further points out that the applicant’s primary claim “merely requires that data is received from an ‘interconnected network’ which does not preclude a cellular network.”

Lessons Learned: The lesson here is that the BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004), and that a BPAI analysis will not read limitations into the claims from the specification, In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because the primary claim made in Ex parte Tosey failed to recite a distinction between “interconnected network” and “wireless network”, the BPAI was compelled to find that there was no such distinction and therefore rejected the claim. It also didn’t help that the patent application contained some typographical errors – a general indication of overall sloppiness in preparing the application.

As I have previously discussed in this blog, when prosecuting a patent application in a crowded field of competitors (such as the wireless networking industry) it is absolutely crucial to point out – in the claims – the limitations and distinctions of your invention as compared to those that are already patented. A twisted version of an old adage reads “Ready, Fire, Aim!”, which is a very poor strategy for successful patent prosecution.


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