Patent Examiners Should Interpret Claims In Light of Specification

In re Johnston (Fed. Cir. 2006)

Although the CAFC affirmed the B.P.A.I’s use of a dictionary in defining the patent applicant’s claim terms, the court did so only because the patent specification did not otherwise provide any limits the terms.  The court thus indicated that the PTO should apply the principles of Phillips v. AWH during prosecution — rather than the PTO’s current practice of giving claims their “broadest reasonable interpretation.”

In addition, the court provided an excellent review of its string of precedents concerning the standard for combining references in an obviousness rejection:

Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) (“In holding an invention obvious in view of a combination of references, there must be some suggestion, motivation, or teaching in the prior art that would have led a person of ordinary skill in the art to select the references and combine them in the way that would produce the claimed invention.”);

In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998) (“When the references are in the same field as that of the applicant’s invention, knowledge thereof is presumed. However, the test of whether it would have been obvious to select specific teachings and combine them as did the applicant must still be met by identification of some suggestion, teaching, or motivation in the prior art, arising from what the prior art would have taught a person of ordinary skill in the field of the invention.”);

In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (there must be “some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references”);

Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cri. 1985) (“When prior art references require selective combination by the court to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself.”).

Be aware that this particular issue is being considered by the Supreme Court in KSR v. Teleflex.  This decision solidifies the CAFC’s position and increases the odds that KSR will be taken-up on certiorari.  As noted by Professor Wegner, the Johnston panel “says nothing about the Anderson’s-Black Rock or Sakraida Supreme Court standard of patentability” that is the subject of the KSR case.

 * Cite as Dennis Crouch, Patent Examiners Should Interpret Claims In Light of Specification, Patently-O, January 30, 2006 at