Prosecution Disclaimer Narrows SOME of the claims

ScreenShot025Ormco v. Align Technology (CAFC 2007, 06–1240)

Here, prosecution disclaimer narrowed Ormco’s patent claim scope, but only for some of the claims.

Ormco’s invention relates to computer-aided design of orthodontics.  During prosecution Ormco distinguished its invention based on its automated calculation of final tooth position even though the claims do not explicitly require fully automated calculations.  Although finding the disclaimer clear, the CAFC required some relation between the disclaimer and any affected claim before narrowing claim scope. As a consequence, the scope disclaimer only applies to claims directed at finish tooth positions and not to other claims — such as those directed to preliminary organization of tooth data.

Dissent: Dissenting from the majority opinion, Judge Kathleen O’Malley (N.D.Ohio, sitting by designation) criticized both the majority and the lower court for their procedural sloppiness.  Judge O’Malley would have remanded to wait for a more developed opinion from the district court.


  • In passing, the court reminds us that the existence of prosecution disclaimer is determined within the claim construction phase – and thus reviewed de novo.
  • The patents at issue are quite hefty for this type of technology – 97 pdf pages.

9 thoughts on “Prosecution Disclaimer Narrows SOME of the claims

  1. 9

    Did this case slip through without rage from the patent bar because of the new rules package that never went into effect?

    Ormco seems to stand for the proposition that a court can look at the prosecution history, specification, and claims to “interpret” the claims. The majority didn’t even interpret language in the claims but instead imported a limitation from the specification into the claims. What happened to the claims defining the metes and bounds of the invention?

  2. 8

    Judge O’Malley was on the panel in my case back in February (Biomedical Patent v. California — no decision yet). She has sat by designation in the Sixth Circuit as well, and she has no shown no reluctance to dissent where she believes that to be legally correct.

    That’s how it should be. If visiting judges were expected to defer to the regulars, what’s the point in having visitors?

  3. 7

    As a patent attorney in Cleveland, and speaking only for myself, I would add that Judge O’Malley has the reputation of being well-versed in patent law. Her dissent certainly makes clear that she’s on top of the Federal Circuit’s precedents. It’s a good thing when the Feds follow their own precedents, isn’t it?

  4. 6

    I’m back from my rumrun after the PTO live webtalk last Thursday. I fear I’ll go through the new supply even quicker than the last.

    Regarding fonts, I missed the use of “Arial.” Arial, by the way, is a knock-off of Helvetica.

    It’s not that I don’t like the Trebuchet MS, but what MS doesn’t know about fonts would fill a lake. Of course, for readability, which is in great part a function of what a person has grown up with, nothing compares to Times Roman. The use of serifs consistently applied to the characters of a given font, such as in Times Roman, also contributes significantly to readability. Times Roman and other serif typefaces has traditionally been the mainstay in the U.S., to wit, newspapers, books. The human eye/brain reading function develop anticipatory recognition facilities (boy, I said a mouthful).

    As I recall, there was a time when Helvetica ruled. Then, at least in Europe, the Univers typeface family with its numbered nomenclature blossomed. Although not all would agree with me, both of these san-serifs are bland and boring to the eye; undeniably, both give less hint for speed reading recognition, even to those brought up with them.

  5. 5

    I know it’s getting popular to dump on the Federal Circuit, but it takes some gumption for a District Court judge, sitting by designation, to chastise the appellate court for misinterpreting its own case law.

  6. 4

    I think the font is fixed. For a while, the articles were showing up on my computer as Arial, which (IMNSHO) is fine for stuff like titles, but really blows for paragraph text. Now we seem to be back to Trebuchet. *Yay!*

  7. 3

    Seems like common sense, i.e. disclaimer related to automated calculation of final tooth position can only apply to claims directed at tooth positions. What am I missing?

  8. 2

    The new font on the website seems to make it a lot more difficult to read. Or am I the only one who feels this way?

  9. 1

    Patent includes more than 25 claims ????
    Shame on the patentee for wasting the USPTO’s valuable time !!!!
    Blame the patentee for the backlog.

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