Written by Mark Terry
Today’s first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a claim that turned on the construction of the claim term “embedded.” As a Patent Attorney in Miami with a full docket of patent cases, BPAI decisions that involve claim construction are highly topical for me.
In Ex parte
Benson, the BPAI explored the issue of how the claim term
“embedded” should be construed. The Applicant argued the claim term should be
given the more narrow ordinary dictionary meaning. And the Examiner, as usual,
argued it should be given a broader meaning that supported the 35 U.S.C. 102
anticipation rejection. The Applicant argued the Examiner’s claim construction
was over-broad and unreasonable.
BPAI decided: “We recognize that in giving the term “embedded” the broadest
reasonable interpretation in light of the usage of the term in the
Specification; we have expanded the meaning of “embedded” beyond its common
dictionary meaning. However, in this instance, it is clear from the disclosure
in the Specification that the meaning of “embedded” is not limited to the
dictionary definition. See, e.g., In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); Phillips
v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005); In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).”
Lessons Learned: When you launch an “unreasonable interpretation” attack on an Examiner’s rejection based on an “ordinary dictionary meaning” premise, you must make sure your specification didn’t broaden the scope of the claim term at issue. If your specification did, in fact, broaden the scope of the claim term, then you would be wise to use another claim term that explicitly limits its scope to the ordinary dictionary meaning you assert. This is yet another reason why a precisely drafted claim is so important in patent prosecution. I had previously expounded on the issue of precise claim drafting in a blog post here.