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Two separate things are not one thing September 24, 2010

Posted by Brian Schar in Federal Circuit, Patent prosecution, USPTO.

I have been absent from my blog for quite some time, first for vacation, then for catching up from vacation.  Part of catching up is reading Federal Circuit opinions that I missed while I was gone.  One of the more interesting, for me, has been Becton Dickinson v. Tyco Healthcare.

One of the more annoying, and lazy, rejections that I receive is of a claim to A+B, where A and B are separate items, over a reference that only discloses A, the rationale being that “A is both A and B.”  It’s a veiled inherency rejection that I typically handle in the same manner as any unsupported inherency rejection.  Happily, Becton Dickinson gives us another arrow in our quiver to combat those rejections.  In that case, claim 1 claimed 4 separate elements.  As the Federal Circuit said, “[w]here a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct components’ of the patented invention.”  (Becton Dickinson, slip op. page 10).  This is particularly true where the specification “confirms” that the separate claimed elements are in fact separate elements.  (Becton Dickinson, slip op., page 11).  This is even more true where the proposed construction “renders the…claims nonsensical.”  (Id.).  Of course, a nonsensical construction in litigation is necessarily unreasonable in prosecution, implicating the “broadest reasonable construction” guideline.  Where you claim separate elements, and the specification confirms that such elements are separate, you are entitled to rely on an interpretation in which those separate elements are indeed separate.

Becton Dickinson also provides a great weapon against the unreasonable interpretation of the phrase “connected to” .  I have had Examiners contend, with a straight face, that separate objects across the room are “connected to” one another.  The argument goes something like this: if tool A is sitting on table B, which rests on floor C, from which wall D extends, and item E extends from the wall, then A is connected to E.  I have also heard Examiners contend that a single unitary object – usually something simple like a rod or bar – is really two things “connected to” each other at an arbitrary point inside the unitary object.  Usually when I hear one of these lines of “reasoning” at an interview I begin to compose the appeal brief in my head.  Fortunately, the Federal Circuit brings some much-needed common sense to the issue, which may help prevent appeals on this issue.  One asserted claim required two separate elements to be “connected to” one another.  (Becton Dickinson, slip op., p. 11).   However, those elements were separate and distinct, such that if those separate elements were instead “one and the same,” then the claim would require that “one and the same” entity to be “‘connected to’ itself…a physical impossibility.”  Score one for simple logic and common sense. 

These are additional arguments for Office Action responses and appeal briefs in which the Office has taken an unreasonable stance in claim construction and gone far beyond the broadest reasonable interpretation of a claim.


1. pong - October 6, 2010

“Usually when I hear one of these lines of ‘reasoning’ at an interview I begin to compose the appeal brief in my head.”

If I had a nickel for every time I’ve had to stifle a laugh at one of the examiner’s “explanations” during an interview, I’d be a very rich man.

Thanks for the laugh. Now if we could just get the examiners to read your post, maybe they’d see how incredibly ridiculous they appear when they make these types of rejections.

2. Retractable Technologies v. Becton – Application Drafting Lessons - July 9, 2011

[…] structurally continuous – they are recited as element and sub-element. In prosecution, Examiners sometimes apply a single structure in a reference for two separately-recited claim elements, which Becton v. Tyco indicates is incorrect. I don’t think this case does anything to undercut […]

3. Two separate things are not one thing, part 2 « American IPA - August 4, 2011

[…] a previous post, I described why a reference that discloses one of two claim elements, but not the other, does not […]

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