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| Authored by: Anonymous on Wednesday, April 24 2013 @ 10:11 AM EDT |
Patent application prosecution takes place in writing. Any argument or
discussion of the meaning of terms is made on the record.
At enforcement time, the other side has full access to everything that was said
about the meaning of terms during the application process and everything said
can and is used against the patent holder.
The is from the U.S. MPEP:
Manual of Patent Examining Procedure - MPEP
Table of Contents
Previous section
2100 Patentability
2111 Claim Interpretation; Broadest Reasonable Interpretation [R-1]
CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION
During patent examination, the pending claims must be "given their broadest
reasonable interpretation consistent with the specification." In re Hyatt,
211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). Applicant always has
the opportunity to amend the claims during prosecution, and broad interpretation
by the examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (Claim 9 was directed to a process of
analyzing data generated by mass spectrographic analysis of a gas. The process
comprised selecting the data to be analyzed by subjecting the data to a
mathematical manipulation. The examiner made rejections under 35 U.S.C. 101 and
102. In the 35 U.S.C. 102 rejection, the examiner explained that the claim was
anticipated by a mental process augmented by pencil and paper markings. The
court agreed that the claim was not limited to using a machine to carry out the
process since the claim did not explicitly set forth the machine. The court
explained that "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." The court found that applicant was
advocating the latter, i.e., the impermissible importation of subject matter
from the specification into the claim.). See also In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997) (The court held that the PTO
is not required, in the course of prosecution, to interpret claims in
applications in the same manner as a court would interpret claims in an
infringement suit. Rather, the "PTO applies to 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 applicant's
specification.").
The broadest reasonable interpretation of the claims must also be consistent
with the interpretation that those skilled in the art would reach. In re
Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999) (The
Board's construction of the claim limitation "restore hair growth" as
requiring the hair to be returned to its original state was held to be an
incorrect interpretation of the limitation. The court held that, consistent with
applicant's disclosure and the disclosure of three patents from analogous arts
using the same phrase to require only some increase in hair growth, one of
ordinary skill would construe "restore hair growth" to mean that the
claimed method increases the amount of hair grown on the scalp, but does not
necessarily produce a full head of hair.).
http://mpep.info/2100_2111
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