You say “potato,” USPTO says … “dough”: when the broadest reasonable interpretation is unreasonable

The USPTO examiners use the broadest reasonable interpretation (BRI) when construing claims during examination of patent applications.  The BRI standard requires consideration of the “broadest reasonable meaning of [a claim’s] 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 the applicant’s specification.”¹ 

However, the USPTO frequently assigns the broadest possible interpretation without considering the specification.  An overly broad interpretation can significantly expand the universe of prior art and render the claim unpatentable.   

One recent example of an overly-broad BRI is in Ex Parte Barber², the application claimed a potato chip comprising a potato slice.  The PTAB overturned an examiner’s interpretation of “potato slice” as encompassing sliced, fried dough that included potato flour, potato flakes or potato starch as an ingredient. The PTAB reasoned that the ordinary meaning of potato slice was “a thin flat piece cut from a potato.”  Id. at 6. The PTAB then consulted the specification to see if there was a definition that expanded this ordinary meaning and did not find any.  The PTAB reversed the obviousness rejection because the prior art’s disclosure of sliced dough did not read on a potato slice.

Federal Circuit case law further clarifies that the BRI must be consistent with the specification, not merely one that is not inconsistent with the specification:

The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.”

See PPC Broadband, Inc. v. Corning Optical Communications RF, LLC³ (emphasis added).  And in In re Smith Int’l, Inc.⁴, the court concluded that the ‘protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation’ divorced from the specification and the record evidence.”

In recent years, the Federal Circuit has frequently reversed the USPTO for adopting interpretations that are too broad and/or unreasonable when viewed in the context of the specification. Applicants can, and should, rely on this precedent, summarized below, in instances where the BRI is unreasonable.   

• In PPC Broadband, Inc., above, the Federal Circuit reversed the PTAB’s dictionary construction of the term “reside around” to mean “in the immediate vicinity of” or “near.” The Federal Circuit noted that the term “around” was used seven times in the specification in the context of encircling or surrounding.  The court also noted that the alternate term “near or nearest was used to refer to something “in the vicinity of.”  The court stated that “[t]he fact that “around” has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of this specification.”  The obviousness rejection was vacated.
• In In re Smith (above) the claim term at issue was “generally cylindrical tool body” in the context of a drilling tool. The PTAB interpreted the term “body” as including other elements inside it, and not just an outer shell. The Federal Circuit reversed the construction as unreasonably broad, because the specification sufficiently distinguished the “body” of the drill from other components within the body. Consequently, the obviousness rejection was overturned.

• In In re Power Integrations, Inc.⁵, the Federal Circuit reversed the PTAB’s dictionary interpretation of “coupled” as encompassing any two components in the same circuit, not directly connected. The court found that the PTAB failed to consider the specification and the plain language of the claim that required a causal relationship between two coupled elements. The Federal Circuit also noted that because the claim already recited that the elements were in the same circuit, the PTAB’s interpretation would render the term “coupled” meaningless. The anticipation and obviousness rejections were vacated. 

• In D’Agostino v. MasterCard International⁶ the Federal Circuit reversed an “unreasonable” claim interpretation of the phrase “limit[ing] transactions to a single merchant.” The PTAB interpreted “single merchant” as including a chain of (same store) merchants.  The court reasoned that “[i]f Target is more than one merchant, then telling the authorizing entity to limit transactions to Target is not limiting the number of merchants (whose transactions are to be authorized) to one.”  The court also found support for the “single means one” interpretation in the specification, in which different embodiments other than the one claimed referred to a “plurality” of merchants. 

• In In re Man Machine Interface Technologies, LLC⁷, the PTAB construed “thumb switch…adapted for activation by a human thumb” to as “merely require that a switch . . . be capable of being enabled/activated by a thumb but . . . not preclud[ing] another digit, e. index finger.” The Federal Circuit held that the PTAB erred by not interpreting “thumb switch” in light of the specification, which expressly stated that the thumb switch is a “slightly bigger than thumb size circle or oval hat is contoured to the contours of a thumb,” and highlighted the numerous references to a thumb when addressing the thumb switch.  The court also reversed the PTAB’s “unreasonably broad” construction of a remote control “adapted to be held by a human hand” as encompassing a desk bound mouse, because the specification explicitly distinguished the desk-bound mouse from the invention. The court held that “[t]he broadest reasonable interpretation cannot be one that is expressly disclaimed in the specification.”  The anticipation rejection was reversed.
  
• Vivint, Inc. v. Alarm.com Inc.⁸, was a case where the PTAB adopted a construction that ignored explicit teachings in the specification. The PTAB construed “communication device identification codes,” which was undefined in the specification, as something capable of uniquely identifying communication devices.  But then, the PTAB concluded that a phone number or email address cannot uniquely identify a communication device.  The Federal Circuit reversed, finding that the conclusion “defies the patent’s teachings” which stated that phone numbers could uniquely identify mobile devices.  The PTAB’s obviousness holding was vacated.

In sum, the BRI cannot be the broadest possible interpretation, nor can it be an interpretation divorced from the specification.  The BRI cannot defy the patent’s teachings nor encompass an expressly disclaimed embodiment in the specification.  It appears that the Federal Circuit is attempting to bring the BRI closer to the Phillips v. AWH[9] standard used in courts for construing issued patents, which relies heavily on the specification and file history to interpret claims.  As such, Applicants should define terms, or at a minimum, use terms consistently throughout the specification and file history to be better positioned to overcome an overly broad or an unreasonable BRI based on a dictionary definition.

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Sources

1. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
2. Ex Parte Barber, appeal of application serial no. 13/904,889, decided August 15, 2019.
3. PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, LLC, 815 F.3d 747 (Fed. Cir. 2016).
4. In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017).
5. In re Power Integrations, Inc., 884 F.3d 1370 (Fed. Cir. 2018).
6. D’Agostino v. MasterCard Int’l, 844 F.3d 945 (Fed. Cir. 2017).
7. In re Man Machine Interface Technologies, LLC, 822 F.3d 1282 (Fed. Cir. 2016).
8. Vivint, Inc. v. Alarm.com Inc. 754 Fed. Appx. 999 (Fed. Cir. Dec. 20, 2018), non-precedential.
9. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (holding that the specification is the single best guide to the meaning of a disputed term, and that the specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication).