Written by Mark Terry   

Today, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s rejections of a key ARM Ltd. patent application, thereby clearing the way for ARM’s application to issue as a patent. As a Patent Lawyer practicing in Florida, this case was instructive in its illustration of the case law surrounding claim construction.

At issue in this case was the construction of the claim term “reallocation.” On the issue of claim construction, the BPAI decision stated: During prosecution, “the 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)). “[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). “[T]he 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.

The BPAI went on to state that the Examiner had not provided a “reasonable interpretation” of the claim term “allocation” as required by the case law. The Examiner’s construction was beyond credulity. As such, the BPAI stated that the “allocation” claim term was not found in the cited prior art.”[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Consequently, the BPAI reversed the Examiner’s rejections.

This case illustrates an important practice pointer for patent practitioners. When reviewing an Examiner’s rejection, pay close attention to the Examiner’s construction of key claim terms. The Examiner’s logic should be closely scrutinized to ensure that the claim terms were interpreted “reasonably.” If the Examiner’s claim term construction is strained or beyond reasonableness, this presents a vulnerability that may be attacked on appeal.