Broadest Possible Interpretation Versus Broadest Reasonable Interpretation

In a non-precedential decision dated December 3, 2010 in U.S. patent application no. 10/286,314, the Board of Patent Appeals and Interferences (BPAI, or “the Board”) reversed the findings of the examiner on the basis that the examiner’s interpretation of claim language was not supported by the evidence of record.

The only independent claim in the application, claim 41, recites in part “a substrate defining a channel” in a device for performing microfluidic processing of a sample.

In the Final Office action dated June 27, 2008, the examiner rejected claim 41 as being anticipated (lacking novelty) under 35 U.S.C. 102(e) in view of U.S. publication no. 2002/0187074 (O’Conner et al.).  Specifically, on page 5 of the Office action, the examiner notes that the O’Conner publication discloses “a substrate (Figs. 7E-7F part 229) defining a channel (7E-7F part 227).

The applicants filed a response after the final rejection on August 26, 2008, in which they argued that “Layer 229 does not correspond to the substrate of claim 41 because this layer is disclosed to have no recesses or cavities and thus does not define a channel” as is required by claim 41.

The examiner then sent an advisory action dated September 12, 2008, in which the examiner indicated that claim 41 does not require “recesses” or “cavities,” and that “It is improper to import claim limitations from the specification.”  The examiner further indicated that the O’Conner publication discloses “a substrate part 229 that defines a channel 223” and that the O’Conner publication therefore anticipates claim 41.

The applicants subsequently appealed the rejection of claim 41 and filed an appeal brief on November 18, 2008.  In the appeal brief on pages 12-13, the applicants provide a dictionary definition of the word “define,” which definition is consistent with the usage of the term “define” throughout the specification

In the examiner’s answer to the appeal brief, dated February 19, 2009, on page 5, the examiner relies on an alternative definition of the word “define” (from the same dictionary that the applicants rely on) to indicate that “a broad reasonable interpretation of the word “define” based on how the substrate defines a channel in the disclosed embodiments would

Be “to give detail to” or “to give definition to.”  Thus, the examiner notes that the “substrate 229 gives detail to the channel 223” since the substrate 229 provides a single boundary that gives definition to the channel 223.

The applicants filed a reply brief on April 20, 2009, in which they “maintain their disagreement with the Examiner over the meaning of the term “define”.”

The Board then took up the appeal and rendered their decision on December 3, 2010.  In the decision, the Board addressed the question of whether the examiner applied an overly broad interpretation to the claim term “defining.”

The proper standard for interpreting claim language at the U.S. Patent and Trademark Office (USPTO) is that claims must be given their broadest reasonable interpretation consistent with the specification (see MPEP § 2111, which references the Federal Circuit’s decision in Phillips v. AWH Corp., 415 F.3d 1303, and in In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359).

However, in practice, it seems that some examiners at the USPTO use a standard of “broadest possible” interpretation of the claims.  This practice is clearly inconsistent with established law, and the Board in this decision properly reverses the examiner’s rejection of claim 41 since the examiner has taken an overly broad interpretation of the claim term “defining,” which interpretation is inconsistent with the specification.

Thus, in this instance the Board follows the established standard for interpreting claim language at the USPTO, that claims must be given their broadest reasonable interpretation consistent with the specification (emphasis added), and does not allow the examiner to use a “broadest possible” interpretation standard.

Read/download the decision here

Prepared by Patrick Buechner