By Dennis Crouch
In re Nordt Development Co., LLC. (Fed. Cir. 2018)
During the course of prosecution of its flexible knee brace patent, Nordt amended the claims to include a limitation that the struts and other components were “injection molded.” The idea here was that the prior art primarily used fabric or elastic bands and so the injection molding limitation would allow the applicant to slip through.
Claim 1 at issue here:
A support for an area of a body that includes a hinge joint, comprising:
(a) a hinge mechanism comprising an injection molded strut component and injection molded first and second arm components;
(b) an elastically stretchable framework injection molded about the strut and arm components of the hinge mechanism, the framework being configured to extend across the hinge joint of the area of the body, and the framework defining a flexible, elastically stretchable web of elastomeric interconnecting members; …
The examiner though gave essentially no weight to the new limitation. According to the examiner, the claims are apparatus claims and thus the included method of manufacturing is immaterial.
Injection molding is a method of manufacturing an apparatus and claim 1 is an apparatus claim. In order to anticipate the injection molded feature, the prior art must disclose the finished product and not the method of making the product. Therefore, although [the prior art] does not disclose the sleeve is injection molded, [it] does disclose the sleeve is a flexible, elastically stretchable web of elastomeric interconnecting members [as required by the claims]
On ex parte appeal to the PTAB, the Board affirmed the rejection and further implied that, although the “injection molded” limitation could potentially be limiting, Nordt had failed to “persuasively explain structural limitation is imparted by this manufacturing practice.” Thus, although the prior art knee brace was not injection molded, the Board found it to anticipate the resulting product since it included the same structural elements. The approach offered by the PTO classifies the claim as a product-by-process claim. For those claims, the Federal Circuit has ruled that patentability “does not depend upon its [claimed] method of production.” In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985). Rather, the claim will be unpatentable if the resulting product is found in the prior art “even though the prior product was made by a different process.” Id.
On appeal here, the Federal Circuit has vacated that finding – holding that the “injection molded” limitation is a structural limitation and thus should be seen as limiting. In its holding, the court followed the precedent of In re Garnero, 412 F.2d 276 (CCPA 1969) (holding that “interbonded one to another by interfusion” connotes structure to a claimed composite and should therefore be considered in the determination of patentability) as well as Hazani v. U.S. Int’l Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997) (“chemically engraved” was a structural limitation); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370 (Fed. Cir. 2000) (term “integral” was a structural requirement even though described as a manufacturing process in the specification); 3M Innovative Props. Co., 350 F.3d 1371 (finding “superimposed” to describe a structural relationship and not a process); SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) (Newman, J., dissenting) (listing “a molded plastic” as an example of a process limitation that connotes structure). See MPEP 2113.
Thus, the general precedent of Thorpe is good law: Board should typically not accord patentable weight to a process limitation in a product-by-process claim. However, patentable weight should be given to the limitation when it connotes a required structure. Here, the Federal Circuit found that this case fits the second category:
[W]e find that “injection molded” connotes structure. Although the application describes “injection molded” as a process of manufacture, neither the Board nor the examiner dispute Nordt’s assertion that “there are clear structural differences” between a knee brace made with fabric components and a knee brace made with injection-molded components.
Here, the court concluded that it surely connotes structure, but was unable to particularly define what that structure means. Rather, on remand the Board will need to determine what particular structures are being claimed by the “injection molded” limitation.
= = = = =
Note here that the court did not discuss how broadest reasonable interpretation impacts the decision here. A different panel might have held that the “best” interpretation of the claims is that the limitation provides structure, but a reasonable interpretation is that it merely indicates the process of manufacturing.
= = = = =
Could the applicant have drawn the same line by claiming that the strut is “configured to exhibit the properties of an injection molded material” rather than claiming an “injection molded” strut?