Federal Circuit: “Injected Molded” limitation imparts structure (although we can’t define what structure)

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?

35 thoughts on “Federal Circuit: “Injected Molded” limitation imparts structure (although we can’t define what structure)

  1. 7

    Was the limitation re “injection molding” described as an important feature in the spec or was it just one example listed in a boiler/laundry list of possibilities? If the latter, this seems like an incredible waste of money.

    And it remains a “product by process” limitation, of a sort. If you do not use injection-molded material to manufacture, you don’t infringe. The applicants theory is that injection molding provides special structural properties. They’re stuck with it. In a just system, they’d also be stuck with this theory when others come after them with a similar claim but of course that would be sooooooooo unfair.

    1. 7.1

      The applicants theory is that injection molding provides special structural properties. They’re stuck with it.

      Injection molding does provide special structural properties. You can do more complex geometries with injection molding. With fillers, you can increase the strength of material. Additionally, you can use multiple types of plastic together.

      One can question the obviousness of using such a process. However, there should be no question as to the whether this results in a structural difference. You may need a microscope and/or testing equipment to verify a structural different, but it is there.

      To the extent that multiple different processes can be used to manufacture anything, odds are pretty good that they all result in some type of structural difference.

      BTW — this speaks to one of the unstated problems with 3D printers. While you may get the form of a part to be (nearly) identical (even with the same material) using a 3D printer, the microstructure is very likely going to be different, which impacts the structural characteristics of whatever part is be produced.

      1. 7.1.1

        Bad facts make bad law. I agree the result is right in this particular case.

        IMHO should have been disclosed and claimed in a structural manner, e.g., a continuously and unitarily formed part (integrally formed would have a different meaning), preferably having the stress, flex and other physical characteristics typical of an injection molded part.

        Yes, hindsight is better than 20/20, and yes, the inventor likely didn’t disclose it this way. But making the disclosure definite is what we’re getting paid for.

        1. 7.1.1.1

          “IMHO should have been disclosed and claimed in a structural manner, e.g., a continuously and unitarily formed part (integrally formed would have a different meaning), preferably having the stress, flex and other physical characteristics typical of an injection molded part.”

          Yeah they never do that. And this happens routinely.

          1. 7.1.1.1.1

            Not sure if that phrase was meant to be ironic…

            disclosed and claimed in a structural manner, e.g., a continuously and unitarily formed part

            HOW something is formed (the continuously and unitarily) are words sounding in function as opposed to words sounding in structure.

            Did that even dawn on you 6?

            1. 7.1.1.1.1.1

              I’m not sure why you’re responding to me here, you seem to have quoted the guy above. I just said that people wanting to claim injection molded parts never try to do what he suggests in real life, and claiming such is routine. What I said is a factual statement, and nothing about it is ironic and it isn’t up for further discussion so I’m not sure what you’re even saying in your response.

              1. 7.1.1.1.1.1.1

                I responded to your rather bland “And this happens routinely” in response to the quote from the guy above.

                What you said may be a “factual statement,” but it is one that misses the point here. I comment that you may want to stop a second and consider what that missed point may be.

        2. 7.1.1.2

          e.g., a continuously and unitarily formed part (integrally formed would have a different meaning), preferably having the stress, flex and other physical characteristics typical of an injection molded part.

          [eye roll]

          The problem here is that substituting a material used to make part of an apparatus with a known material with known desirable properties is not “innovating.” It’s an obvious variation, and it’s the kind of obvious that you can’t overcome with “secondary factors” because there aren’t any.

          1. 7.1.1.2.1

            In most arts like this if they can’t find the material being used in a similar situation you’ll probably get the claim allowed MM. Putting an “old material” to use in a new field will quite often get you an allowed claim. Materials science has innovations too bruhzinsky.

      2. 7.1.2

        the microstructure is very likely going to be different

        So. F king. What.

      3. 7.1.3

        Injection molding does provide special structural properties.

        Name them.

        You can do more complex geometries with injection molding.

        That’s not structure, it’s a functional capability. I can do more complex geometries on clay with my hand than with I can with a hammer. Says nothing about the structure of the clay.

        With fillers, you can increase the strength of material.

        Again: not structure.

        Additionally, you can use multiple types of plastic together.

        Not structure. That’s function.

        One can question the obviousness of using such a process.

        It’s totally obvious in this context. There is no question about that, at least not a serious one that I’ve seen anyone attempt to raise.

        there should be no question as to the whether this results in a structural difference. You may need a microscope and/or testing equipment to verify a structural different

        Which is why the system frowns upon this kind of game-playing and which is why “injection molded” is a product-by-process limitation.

        1. 7.1.3.1

          complex geometries is…

          functional?

          and not structural?

          What “definition” of “structure” are YOU using?

        2. 7.1.3.2

          Geometries are structural tardvictimMM.

          1. 7.1.3.2.1

            Fillers are also structural details tardvictimMM. They’re literally little pieces of material in the structure.

            1. 7.1.3.2.1.1

              Don’t you just love his little “well anon said something so I am going to take the opposite position” reflex that Malcolm (oh so often) engages in?

              Even here on this topic, where he gets his “claim objective structure” OPTIONAL wish, he immediately reacted against the patentee.

              His cognitive dissonance runs deep…

        3. 7.1.3.3

          “It’s totally obvious in this context. There is no question about that, at least not a serious one that I’ve seen anyone attempt to raise.”

          I will raise it. If they don’t have a piece o art showing such, it’ll probably be deemed non-obvious and be allowed. Follow up on the case to watch it get allowed.

    2. 7.2

      “And it remains a “product by process” limitation, of a sort. If you do not use injection-molded material to manufacture, you don’t infringe. ”

      That is correct.

  2. 6

    I’ve dealt with literally this same issue before myself. I generally just count it as a structural limitation myself so I would go with the CAFC, as it is a term of art. Still, I really do think these kinds of terms need to be defined at some point in the history of the patent system, whether we have a huge glossary that the applicants can supplement as they desire, or whether it be done differently.

    1. 6.1

      …and will you have a definition section for the words in the glossary?

      (turtles all the way down and all)

      1. 6.1.1

        turtles all the way down

        Billy doesn’t have a point, in case anybody’s wondering (and probably nobody is). What a f king shirtbag.

        1. 6.1.1.1

          Who is Billy and what is the point of this mindless ad hominem post of yours?

  3. 5

    Is the PTO still discounting process limitations in product by process claims?

  4. 4

    How on earth could that “limitation” affect affect the patentability of this invention?

    1. 4.1

      …maybe through the all elements rule….

      (Geesh, you’d think that Malcolm would be happy woh this one with “structure” and all)

      1. 4.1.1

        Injection molding is old in the art. Did the art teach not to use injection molded material in limb braces?

        No, it didn’t.

        So what’s the patentability hook? 103 is a real thing you know.

        1. 4.1.1.1

          There is no tie to any “did X teach not to Y” in any view of your question or my response, so it is unclear from where you are grabbing this thought.

          103 is a real thing you know.

          Sure it is. What’s your point?

          1. 4.1.1.1.1

            There is no tie to any “did X teach not to Y” in any view of your question

            Try to believe it, folks.

            Once again, my question: “How on earth could that “limitation” [injection molded] affect the patentability of this invention?”

            103 is relevant to patentability, last time I checked. The teaching in the prior art is relevant to 103, last time I checked.

            Of course, I’m engaging in a “discussion” with a dense hypocrite who doesn’t think that politics is relevant to patent law so the low mileage is to be expected, I guess. Carry on, wayward sons.

            1. 4.1.1.1.1.1

              Your questions simply are not making a point that you think that they are making.

              Speak directly.

              1. 4.1.1.1.1.1.1

                Speak directly.

                Go f ck yourself, derpwad.

                How’s that? You want me to explain the relevance? LOL

                1. Whether or not YOU want to make a point is up to you.

                  How’s that?

                  Maybe try staying on point (if indeed you have one)

                  That’s ‘how’s that’

  5. 3

    Re: “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.”

    Dennis,

    I wanted to note that the solicitor did argue that “[t]he Board must give claims their broadest reasonable interpretation and therefore this Court reviews the Board’s interpretation for reasonableness.” In re Nordt Development Co., LLC, appeal no. 2017-1445, Director’s Initial Brief, p. 9 (Fed. Cir. Feb. 9, 2018) (citing In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997) and Secure Axcess, LLC v. PNC Bank National Ass’n, 848 F.3d 1370, 1382 n.7 (Fed. Cir. 2017)).

    In response I noted that “[a]lthough the PTO gives claims the broadest reasonable interpretation consistent with the written description, . . . claim construction by the PTO is a question of law that we review de novo, . . . just as we review claim construction by a district court.” In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir. 2011) (citing In re Baker Hughes, Inc., 215 F.3d 1297, 1301 (Fed. Cir. 2000) (internal citations omitted)).

    I suggested in my reply brief that it is not clear to that a Board’s decision to construe a claim limitation as a process limitation within a product claim and not give it any patentable weight presents the issue of whether the Board’s construction falls within a broadest reasonable interpretation. For example, it is certainly possible that while a PTO construction of “welding” to include both flame welding and laser welding should be reviewed for reasonableness, a PTO decision to give the recitation of “welding” no patentable weight might be properly reviewed de novo. I suggested that there may well be an interesting question as to whether a Board’s decision to construe a claim limitation as a process limitation within a product claim and not give it any patentable weight should be reviewed for reasonableness or reviewed de novo (in view of Teva Pharms. USA Inc. v. Sandoz Inc., 135 S.Ct. 831 (2015).)

    However, I argued that that this issue did not have to be addressed to resolve this case because even under the solicitor’s proposed inquiry, the Board’s conclusion was not reasonable because the record includes an uncontested examiner acknowledgment that the recitation conveys a structural feature.

    In its decision, the court indicated that it was reviewing the Board’s claim construction de novo, and made a point to note that the Board’s claim construction was “based on a review of only intrinsic evidence”. In re Nordt Development Co., LLC, appeal no. 2017-1445, slip op., p. 6 (Fed. Cir. Feb. 9, 2018) (citing Teva at 841).

    The court appears to indicate that de novo was review was appropriate in this case rather than indicating that the issue does not need to be reached, but elsewhere the court does indicate that “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.” Nordt, slip op. at 8.

    1. 3.1

      Right. But wtf difference does it make in terms of the prior art?

  6. 2

    Injection molding is an old-as-dirt art by this time. One of skill in the polymer arts can immediately ascribe general product structures/differences, to a very large degree,to any part that is “injection molded”, “blow molded”, compression molded”or…etc. (An IM part will almost always have flow lines, a skin-core structure, anisotropic mechanical properties, etc, etc.) This a common question on 1st year polymer science tests. “Injection molded” DOES imply a structure. So does “an injection molding”. The USPTO Examiners, despite a large fraction of applications being in the polymer arts, commonly fail to understand even the bare-bone basics and/or read the Application specs.

    1. 2.1

      If it’s an “old as dirt” option, how can it affect patentability in this invention?

      Something magical about the use of injection molded material in this case?

  7. 1

    “structural” or “connotes structure”

    There are several rungs on the Ladder of Abstraction difference (possible) between the two.

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