Finding that the Patent Trial and Appeal Board (PTAB) erred in rejecting patent claims after improperly construing an apparatus claim element by ignoring what it deemed to be a recited method step, the US Court of Appeals for the Federal Circuit vacated the rejection and remanded to the PTAB for further proceedings. In re: Nordt Dev. Co., LLC, Case No. 17-1445 (Fed. Cir., Feb. 8, 2018).

Nordt filed a patent application directed to an elastic knee brace. The application included apparatus claims that, in response to an anticipation rejection, were amended to include process limitations reciting “injection molded” components. The examiner maintained the anticipation rejection despite acknowledging that the prior art did not disclose the “injection molded” method. The examiner reasoned that the claims were anticipated because “[i]n order to anticipate the injection molded feature, the prior art must disclose the finished product and not the method of making the product.”

On appeal to the PTAB, Nordt argued that the “injection molded” limitation was a structural limitation because it described the structural relationship between the framework and the strut and arm components of the knee brace. The PTAB rejected Nordt’s argument and affirmed the rejection because Nordt “[did] not persuasively explain what structural limitation is imparted by this manufacturing practice.” Nordt appealed.

On appeal, the Federal Circuit found that the “injection molded” limitation was a structural limitation and thus should be seen as limiting. The Court found that the PTAB’s analysis should have focused on whether the claim limitation conferred a patentable distinction over the prior art. The Court noted that the analysis requires determining whether “injection molded” is a process or structural limitation, and if it is structural, determining the meaning of the limitation. The Court found that “injection molded” was structural because, unless the patentee has demonstrated otherwise, the presumption in interpreting ambiguous language is to use its structural sense, and the patent specification describes injection molding as forming an integral component. While the Court found that the “injection molded” limitation was structural, it did not actually identify what that structure was. Instead, the Court remanded for further proceedings consistent with the opinion.