{"id":1968,"date":"2018-02-08T09:49:33","date_gmt":"2018-02-08T14:49:33","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1968"},"modified":"2018-02-13T10:06:49","modified_gmt":"2018-02-13T15:06:49","slug":"process-limitations-are-presumed-to-impart-structural-limitations-even-where-it-is-not-clear-what-those-limitations-are","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1968","title":{"rendered":"Process Limitations are Presumed to Impart Structural Limitations, Even Where it is not Clear What those Limitations Are"},"content":{"rendered":"

In In re Nordt Development Co.<\/a>, LLC, [2017-1445] (February 8, 2018), the Federal Circuit rejected the Board\u2019s claim construction of \u201cinjection
\nmolded\u201d as a process limitation with no patentable\u00a0weight, vacated the Board\u2019s finding of anticipation, and\u00a0remanded.<\/p>\n

The application was directed to an elastic knee\u00a0brace.\u00a0 \u00a0The claims required “an injection\u00a0molded strut component and injection molded first and second arm components” and “an elastically stretchable framework
\ninjection molded about the strut and arm\u00a0components of the hinge mechanism.”\u00a0 The Examiner rejected the claims over as anticipated, and the Board affirmed,\u00a0after\u00a0finding that the applicant did not persuasively explain what\u00a0structural limitation is imparted by “injection molded.”<\/p>\n

The Federal Circuit said that\u00a0when considering the patentability
\nof product claims that contain process limitations, claim\u00a0scope is generally based on the product itself, not<\/em><\/strong> the\u00a0process. The Federal Circuit noted that\u00a0If the process limitation\u00a0connotes specific structure and may be considered a\u00a0structural limitation, however, that structure should be\u00a0considered.<\/p>\n

Nordt argued that the Board erred in presuming that “injection molded” was a product-by-process limitation, and the Federal Circuit agreed, stating that in presuming \u201cinjection\u00a0molded\u201d to be a process limitation, the Board confounded\u00a0two somewhat distinct inquiries\u2014the first being whether\u00a0\u201cinjection molded\u201d is a process or structural limitation,\u00a0the second being the precise meaning of the limitation if\u00a0structural.<\/p>\n

As to the first inquiry, the Federal Circuit found that \u201cinjection molded\u201d
\nconnotes structure. Although the application describes\u00a0\u201cinjection molded\u201d as a process of manufacture, neither\u00a0the Board nor the examiner disputed Nordt\u2019s assertion\u00a0that \u201cthere are clear structural differences\u201d between a\u00a0knee brace made with fabric components and a knee brace\u00a0made with injection-molded components.\u00a0 The Federal Circuit examined the specification and concluded that,\u00a0at a minimum, the specification\u00a0demonstrates that \u201cinjection molded\u201d connotes an integral
\nstructure.<\/p>\n

The Federal Circuit also noted that a default rule that where words of limitation\u00a0that can connote with equal force a structural characteristic
\nof the product or a process of manufacture, they are commonly
\nand by default interpreted in their structural\u00a0sense, unless the patentee has demonstrated otherwise.\u00a0 The Federal Circuit then cited numerous examples where\u00a0such limitations\u00a0to convey structure even when they also describe a\u00a0process of manufacture.\u00a0 The Federal Circuit that not only\u00a0does the specification itself convey a structural\u00a0meaning to \u201cinjection molded,\u201d but the applicant has repeatedly\u00a0represented that it does.<\/p>\n

Acknowledging that Nordt failed to persuasively or precisely explain
\nwhat structural limitation is imparted by “injection\u00a0molded,” the Federal Circuit nonetheless said that the\u00a0failure to identify that structure,
\ndoes not affect the conclusion, as the\u00a0structural nature of \u201cinjection molded\u201d can be gleaned\u00a0from the plain claim language and the specification itself.<\/p>\n

The Federal Circuit remanded so that the Board could construe the \u201cinjection\u00a0molded\u201d limitation, noting that the specification\u00a0supports an interpretation that requires an integral\u00a0structure, and saying it is up to the Board to determine whether this claim language requires any additional structure.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018), the Federal Circuit rejected the Board\u2019s claim construction of \u201cinjection molded\u201d as a process limitation with no patentable\u00a0weight, vacated the Board\u2019s finding of anticipation, and\u00a0remanded. The application was directed … 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":[7],"tags":[],"class_list":["post-1968","post","type-post","status-publish","format-standard","hentry","category-claim-constructino"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1968","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=1968"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1968\/revisions"}],"predecessor-version":[{"id":1970,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1968\/revisions\/1970"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1968"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1968"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1968"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}