In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board’s approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an expectation of success, and its reliance on the doctrine of inherency when the record reveals unexpected results. Now, the Federal Circuit has criticized the Board’s approach to claim construction, finding in In re Smith International, Inc. that the Board applied an unreasonably broad construction that was not consistent with the applicant’s use of the term in the specification.

The Patent At Issue

The patent at issue was U.S. Patent 6,732,817, which had been rejected in an ex parte reexamination proceeding. The invention relates to tools used for drilling. Claim 28 is representative:

28. An expandable downhole tool for use in a drilling assembly positioned within a wellbore having an original diameter borehole and an enlarged diameter borehole, comprising:
a body; and
at least one non-pivotable, moveable arm having at least one borehole engaging pad … and having angled surfaces that engage said body to prevent said arm from vibrating …;
wherein said at least one arm is moveable between a first position … and a second position ….

At issue was  the meaning of the term “body.” Smith argued that “the specification consistently refers to and depicts the body of the drilling tool as a component distinct from other separately identified components, such as the “mandrel” or “piston” that reside inside the drilling tool.” In contrast, the examiner and Board construed it “as a broad term that may encompass other components,” treating it as a “’generic term such as “member” or “element” that by itself provides no structural specificity.'”

The “Broadest Reasonable Interpretation” Must Be Consistent With The Specification

The Federal Circuit decision was authored by Judge Lourie and joined by Judges Reyna and Hughes.

According to the Federal Circuit decision, in the decision on appeal the Board acknowledged that “the specification describes the body as a discrete element separate from other elements,” but justified its broader construction because the specification does not “define” the term or otherwise “preclude the Examiner’s interpretation.” The Board also noted that the claims do not recite any features of the “body” and do not separately recite other components (such as a mandrel).

As summarized by the Federal Circuit, the USPTO urged affirmance based on:

1. the recitation of “a body” as a whole element in claim 28

2. the lack of a recitation of “mandrel” in the claims

3. the lack of definition of “body” in the specification and

4. the lack of an established meaning of “body” in the art

Rejecting these arguments, the court determined that the Board’s claim construction was “unreasonably broad.” The Federal Circuit explained the “broadest reasonable interpretation” claim construction standard applicable at the USPTO, including the importance of 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. 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.” 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).

The Federal Circuit criticized the Board’s reliance on the lack of an express “definition” in the specification. According to the court:

[F]ollowing [the Board’s] logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise. That is not properly giving the claim term its broadest reasonable interpretation in light of the specification.

Because the prior art rejections rested on the incorrect claim construction, the rejections were reversed.

The USPTO’s Guidance On Claim Construction

The UPTO’s Patent Quality initiative includes a focus on Clarity of the Record, which in turn includes a focus on claim construction. The USPTO’s training slides relating to “Broadest Reasonable Interpretation and the Plain Meaning of Claim Terms,” explain that the claims should be interpreted in light of the specification, but also caution against importing features from the specification. Some of the slides seem to encourage the use of a general meaning (not necessarily founded in the specification) unless the specification provides an express definition, as illustrated in this flow chart from the training slides.

Perhaps this material should be reviewed in view of the decision in Smith International.