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Broadest reasonable interpretation September 19, 2013

Posted by Brian Schar in General, Patent prosecution, USPTO.
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The PTAB recently issued a succinct decision that sets forth the state of the law for the USPTO’s “broadest reasonable interpretation” standard for patent claim terms.  In Ex parte Leidholm, one claim element was a “foil substrate.”  The Examiner interpreted that language to read on metal layers sputtered onto a glass substrate, which was disclosed in a prior art reference.  The PTAB reversed.

The broadest reasonable interpretation must be consistent with the specification.  The PTAB did not cite In re Suitco Surface for this proposition, instead choosing to rely on other precedent that isn’t quite so scathing toward the Examiners: In re Translogic Tech, and In re Hyatt.  The applicant’s spec described aluminum foil.  The PTAB thus found that the applicants used the claim term “foil” consistent with its ordinary meaning – “a thin, flexible leaf or sheet of metal.”  That defined the broadest reasonable interpretation, as a result; the sputtered metal on glass disclosed in the prior art was not prior art.

Challenging the breadth of interpretation of claim terms continues to be a winning strategy at the PTAB, particularly where you aren’t giving up any useful claim breadth when making that argument.

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Comments»

1. Dennis - September 20, 2013

Good to see you blogging again.


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