{"id":2710,"date":"2020-03-14T03:00:24","date_gmt":"2020-03-14T07:00:24","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2710"},"modified":"2020-03-15T23:10:20","modified_gmt":"2020-03-16T03:10:20","slug":"patents-prosecution-history-informs-the-meaning-of-the-claim-language-saving-them-from-invalidity","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2710","title":{"rendered":"Patent\u2019s Prosecution History Informs the Meaning of the Claim Language, Saving them from Invalidity"},"content":{"rendered":"\n

Kaken Pharmaceutical Co., Ltd. v. Iancu<\/a>, [2018-2232] (March 13, 2020), the Federal Circuit   reversed the PTAB\u2019s claim construction, and vacated its determination that the challenged claims of U.S. Patent No. 7,214,506 on a method for treating onychomycosis were unpatentable as obvious.<\/p>\n\n\n\n

Kaken proposed that the phrase \u201ctreating a subject having onychomycosis\u201d means \u201ctreating the infection at least where it primarily resides in the keratinized nail plate and underlying nail bed.\u201d The Board rejected Kaken\u2019s construction as too narrow, concluding that \u201cthe express definition of onychomycosis includes superficial mycosis, which in turn is expressly defined as a disease that lies in the skin or visible mucosa. <\/p>\n\n\n\n

The Federal Circuit found that the prosecution history\u2014which includes, specifically, statements made by Kaken to overcome a rejection and the examiner\u2019s statements explaining withdrawal of the rejection based on those statements \u2014 provides decisive support for limiting the claim phrase at issue to a plate-penetrating treatment of an infection inside or under the nail plate.  A patent\u2019s prosecution history can \u201cinform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.  Particularly useful are \u201cexpress representations made by or on behalf of the applicant to the examiner to induce a patent grant,\u201d which include \u201carguments made to convince the examiner that the claimed invention meets the statutory requirements of novelty, utility, and nonobviousness.\u201d  The Federal Circuit said that Kaken\u2019s statements during prosecution, followed by the examiner\u2019s statements, make clear the limits on a reasonable understanding of what Kaken was claiming.<\/p>\n\n\n\n

The Federal Circuit thus reversed the Board\u2019s claim construction, and vacated the determination of obviousness based upon the erroneous construction. <\/p>\n","protected":false},"excerpt":{"rendered":"

Kaken Pharmaceutical Co., Ltd. v. Iancu, [2018-2232] (March 13, 2020), the Federal Circuit   reversed the PTAB\u2019s claim construction, and vacated its determination that the challenged claims of U.S. Patent No. 7,214,506 on a method for treating onychomycosis were unpatentable as … 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":[7,63,70],"tags":[],"class_list":["post-2710","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-prosecution","category-prosecution-history-estoppel"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2710","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=2710"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2710\/revisions"}],"predecessor-version":[{"id":2712,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2710\/revisions\/2712"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2710"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2710"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2710"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}