On September 26, the Federal Circuit defined the limits of the broadest reasonable construction standard. In re Smith International, Inc., No. 2016-2303 (Fed. Cir. September 26, 2017). Specifically, the Federal Circuit stated that a specification’s lack of a definition or preclusion of a particular claim term meaning does not permit the examiner to adopt a claim construction that is at odds with the term’s usage in the specification. Slip op. at 13. The PTAB had affirmed the examiner’s more encompassing interpretation of a claim term which provided for rejections based on anticipation and obviousness when viewed in light of a prior art reference. However, the Federal Circuit reversed the decision of the PTAB, concluding that the PTAB’s claim interpretation was incorrect and the patent at issue was neither anticipated nor obvious in light of a prior art reference.
During ex parte reexamination, patent owner Smith amended claims in U.S. Patent No. 6,732,817 (“the ’817 patent”), directed to a drilling tool for oil and gas operations, which included the term “a body.” The examiner rejected the claims referring to “a body” on the grounds of anticipation and obviousness. The rejections for anticipation and obviousness relied heavily on prior art reference Eddison (International Publ. No. WO 00/31371). Smith appealed the examiner’s rejection to the PTAB, but the PTAB affirmed all of the examiner’s rejections.
In its decision-making, the PTAB affirmed the examiner’s interpretation during reexamination of claim term “body,” describing it as a “generic” term and allowing it to encompass other components of the drilling apparatus such as the “mandrel.” The PTAB cited the lack of other features in the claims, such as the mandrel, as support for its argument that “body” could include other elements. Further, the PTAB stated that nothing in the specification prohibited the examiner from reading the term broadly and there was no definition of “body” in the specification. The PTAB rejected Smith’s assertion that a person of ordinary skill in the art would recognize that “body” is distinct from the other tool components. The PTAB found no error with the examiner’s broad interpretation of “body” and concluded that the examiner’s rejections of the claims were proper.
On appeal, the Federal Circuit reversed. The Federal Circuit stated that, in reexamination proceedings, the PTAB must give claims their broadest reasonable interpretation in light of the claim language and specification. (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). Slip op. at 10 (emphasis added). The Federal Circuit further explained that the broadest reasonable interpretation standard requires an “interpretation that is consistent with the specification” and not the “broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise.” Slip op. at 13. The specification need not contain an explicit definition or preclusion of a reading of a claim term. Although the term “body” was not defined in the ’817 patent’s specification, the patent used the term “body” in a way that distinguished it from other drilling tool components, such as the mandrel. The examiner’s interpretation of “body” included other tool components, in spite of the description in the specification that indicated that the body was a distinct element. The examiner’s interpretation of the claims was inconsistent with the specification. Therefore, the Federal Circuit stated that “body” was not a generic claim term, and that the broad claim construction of “body,” on which the examiner’s claim rejections for anticipation and obviousness rested, was improper.
What This Means For You
This case underscores the importance of a correct understanding of the broadest reasonable interpretation standard. Even when the specification does not define or disclaim a particular definition, the construction adopted must still be consistent with the specification.