{"id":1770,"date":"2017-09-26T18:08:08","date_gmt":"2017-09-26T22:08:08","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1770"},"modified":"2017-10-01T18:38:21","modified_gmt":"2017-10-01T22:38:21","slug":"broadest-reasonable-construction-is-not-one-not-precluded-by-the-specification-but-is-one-consistent-with-the-specification","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1770","title":{"rendered":"Broadest Reasonable Construction is Not One Not Precluded by the Specification, but is One Consistent with the Specification"},"content":{"rendered":"

In re: Smith International, Inc.<\/a>, [2016-2303] (September 26, 2017), the Federal Circuit reversed the PTAB’s affirmance of the Examiner\u2019s rejections of claims in an ex parte\u00a0reexamination\u00a0<\/em>of U.S. Patent 6,732,817 directed to a downhole drilling tool\u00a0for oil and gas operations.<\/p>\n

The Board affirmed the examiner\u2019s interpretation of\u00a0the term \u201cbody\u201d as a broad term that may encompass\u00a0other components such as \u201cmandrel\u201d and \u201ccam sleeve,\u201d\u00a0reasoning that only the term \u201cbody\u201d is recited in the
\nclaims without further limiting features and that the\u00a0specification neither defines the term \u201cbody\u201d nor prohibits\u00a0the examiner\u2019s broad reading of it.\u00a0 The Federal Circuit\u00a0concluded that the Board\u2019s construction of \u201cbody\u201d
\nwas unreasonably broad. Even when giving claim terms\u00a0their broadest reasonable interpretation, the Board\u00a0cannot construe the claims \u201cso broadly that its constructions\u00a0are unreasonable under general claim construction\u00a0principles.\u201d<\/p>\n

The Federal Circuit noted that some of the claims at issue recite a
\nbroad term \u201cbody\u201d without further elaboration on what\u00a0the term \u201cbody\u201d encompasses. However the Federal Circuit noted that the remainder of the specification does not\u00a0use the term as a generic body. There is no dispute that\u00a0the patent specification consistently describes and\u00a0refers to the body as a component distinct from others,\u00a0such as the mandrel, piston, and drive ring.<\/p>\n

On this record, the Board concluded that the Examiner’s broad construction was not precluded.\u00a0 However the Federal Circuit\u00a0 found that the correct inquiry in giving a claim term its broadest\u00a0reasonable interpretation in light of the specification is\u00a0not whether the specification proscribes or precludes some\u00a0broad reading of the claim term adopted by the Examiner.\u00a0 Nor\u00a0is it simply an interpretation that is not inconsistent
\nwith the specification. It is an interpretation that\u00a0corresponds with what and how the inventor describes his\u00a0invention in the specification, i.e., an interpretation that\u00a0is \u201cconsistent with the specification.\u201d<\/p>\n

The Federal Circuit held that giving the term \u201cbody\u201d such a\u00a0strained breadth in the face of the otherwise different\u00a0description in the specification was unreasonable.\u00a0 With the correct construction, the Federal Circuit reversed the rejection of the claims.<\/p>\n","protected":false},"excerpt":{"rendered":"

In re: Smith International, Inc., [2016-2303] (September 26, 2017), the Federal Circuit reversed the PTAB’s affirmance of the Examiner\u2019s rejections of claims in an ex parte\u00a0reexamination\u00a0of U.S. Patent 6,732,817 directed to a downhole drilling tool\u00a0for oil and gas operations. The … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[22,7,12],"tags":[],"class_list":["post-1770","post","type-post","status-publish","format-standard","hentry","category-bri","category-claim-constructino","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1770","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1770"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1770\/revisions"}],"predecessor-version":[{"id":1771,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1770\/revisions\/1771"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1770"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1770"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1770"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}