The scope of patent claims is generally based on the product itself and not the process, In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) —except when it’s not, In re Garnero, 412 F.2d 276, 279 (CCPA 1969) (holding that a process claim connotes specific structure in a claimed composite and therefore should be given patentable weight and considered during examination).
In a recent case decided by the United States Court of Appeals for the Federal Circuit, In re Nordt Development Co., LLC, 2017-1445 (Feb. 8, 2018), the Court was faced with determining whether a patent claim reciting a framework for an elastic knee brace is patentable over the art where the claimed brace is formed though injection molding. Specifically, amended claim 1 of the 13/241,865 patent application recites:
1. A support for an area of a body that includes a hinge joint, comprising:
(a) a hinge mechanism comprising an injection molded strut component and injection molded first and second arm components;
(b) an elastically stretchable framework injection molded about the strut and arm components of the hinge mechanism, the framework being configured to extend across the hinge joint of the area of the body, and the framework defining a flexible, elastically stretchable web of elastomeric interconnecting members. . . (emphasis added)
During prosecution, the Examiner rejected claims 1 and 14 as being anticipated by U.S. Patent No. 6,238,360 (“Gildersleeve”). The Examiner reasoned that Gildersleeve teaches a knee brace with a sleeve that “may be formed of any desirable fabric such as fully-, non-, or partially-stretchable fabric which may or may not be breathable” and “may be fabricated using conventional stitching to conform to knees, elbows or other body joints.” U.S. Patent No. 6,238,360 Col. 3, ll. 27-33, Col. 5, ll. 30-36. In response, Nordt amended the claims to recite the injection molded strut and arm components of the hinge mechanism, arguing that the added language recited a clear structural limitation. Nevertheless, the Examiner maintained the rejections, reasoning that creating the parts using injection molding is a method of manufacturing and not a structural limitation. The case was appealed to the Patent Trial and Appeal Board where Nordt argued that the injection molding language should be construed as a structural limitation, but the Board agreed with the Examiner.
On appeal, the Federal Circuit rejected the Board’s decision. The Court found, referring to In re Thorpe and In re Garnero, that patentability of an apparatus claim is based on the product claim even if the product is limited by a process, except if the process limitation imparts specific structure, in which case the process should be given weight in determining patentability. The Court found that the Board failed to give weight to the injection molding language, and instead simply found that injection molding is a process in a product-by-process claim. In holding that the injection molding language connotes structure, the Court referred to the decision in In re Garnero. The Garnero court held that if a limitation “is as capable of being construed as a structure limitation as ‘inter-mixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘welded,’ all of which at one time or another have been separately held capable of construction as structural, rather than process, limitations,” then the limitation should be given patentable weight. In re Garnero, 412 F.2d 276, 279. The Garnero court additionally reasoned that the proper inquiry is “whether the product defined” by the claim language is “patentably distinguishable over [the prior art] in view of the structural limitation” defined by the limitation. Id.
In Nordt, the Court noted that although injection molding is a manufacturing process, and defined as such in the specification, weight was not given to the fact that the specification describes the injection molding process as developing an integral part of the product. The Court said that at the very least, “injection molded” defines an integral structure within the context of the claim. Additionally, even if the description defines a process, that does not necessarily mean that it does not also define a structure. “Words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.” 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371-72 (Fed. Cir. 2003). Here, the Court found that Nordt provided support in the specification conveying injection molding as a structure. While the Court noted that Nordt did not identify the specific structure it intended to impart by including the injection molding language, that did not affect the Court’s conclusion that the structural nature of “injection molded” can be determined from the plain claim language and the specification. The Court remanded the case for further review and left it to the Board to determine if the “injection molded” language in the claim requires additional support.
The present case showcases the importance of not only clear and concise claim drafting but also the challenges presented by developing or manufacturing products using new technology. Consider 3D printing, for example, where a user has the ability to manufacture a product using new methods or materials. Newly developed materials may provide additional benefits such as weight, strength, or elasticity that are not available through traditional methods. If the product being claimed can overcome the art, and the manufacturing process can present an additional structural benefit claimed by the inventor in the specification, the above-mentioned court decisions suggest the manufacturing process should be given patentable weight.
It will be interesting to see how the Board considers this language and how new cases describing products made with new manufacturing technology are claimed to the U.S. Patent and Trademark office.