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2111    Claim Interpretation; Broadest Reasonable Interpretation

MPEP SECTION SUMMARY Claims must be given their broadest reasonable interpretation in light of the specification. Due to the fact that the applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention.

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The broadest reasonable interpretation does not mean the broadest possible interpretation.

• The broadest reasonable interpretation must be consistent with the ordinary and customary meaning of the term (unless there is an explicit special definition) as used in the specification and drawings.

 

MPEP SECTION SUMMARY The definition of plain meaning is covered in this section. Plain meaning refers to the ordinary and customary meaning given to the term by those with ordinary skill in the art.

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I.   THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING IS INCONSISTENT WITH THE SPECIFICATION

Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification.

II.   IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION

“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim

The structure, material or acts corresponding to the function should determine the meaning of the claim limitation.

III.    “PLAIN MEANING” REFERS TO THE ORDINARY AND CUSTOMARY MEANING GIVEN TO THE TERM BY THOSE OF ORDINARY SKILL IN THE ART

“[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application

The ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.”

The only exceptions to giving the words in a claim their ordinary and customary meaning in the art are:

1. when the applicant acts as his own lexicographer; and
   
2. when the applicant disavows or disclaims the full scope of a claim term in the specification.

IV.   APPLICANT MAY BE OWN LEXICOGRAPHER AND/OR MAY DISAVOW CLAIM SCOPE

A. Lexicography

An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the time of filing.

B. Disavowal

Applicant may also rebut the presumption of plain meaning by clearly disavowing the full scope of the claim term in the specification.

• Disavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable.
  
  

MPEP SECTION SUMMARY The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.

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MPEP SECTION SUMMARY Transitional phrases are covered in this section. These include phrases like comprising, consisting essentially of, and consisting of.

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The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.

• The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.

“Comprising”:

• is inclusive or open-ended and does not exclude additional, unrecited elements or method steps
• “including” and “characterized by” are synonymous with comprising

“Consisting essentially of”:

• limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention
• for the purposes of searching for and applying prior art under 35 U.S.C. 102 or 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, the term “consisting essentially of” will be construed as equivalent to “comprising”

“Consisting of”:

• cannot add an element or step, synonymous with comprising
• the phrase “consisting of” excludes any step not specified in the claim
• a claim that depends on a claim which includes the term, “consisting of” within the recited steps cannot later add a step

Where an applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim, but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection

MPEP SECTION SUMMARY This section covers the use of the following phrases; adapted to, adapted for, wherein, and whereby.

Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.

However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:

• “adapted to” or “adapted for” clauses;
• “wherein” clauses; and
• “whereby” clauses.

The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.

MPEP SECTION SUMMARY USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. This section covers functional and nonfunctional descriptive material including how to determine whether a functional relationship exists, that the functional relationship must be new and unobvious, and machine-readable media.

I. DETERMINING WHETHER A FUNCTIONAL RELATIONSHIP EXISTS BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS)

A.   Evidence Supporting a Functional Relationship

To be given patentable weight, the printed matter and associated product must be in a functional relationship.

• A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated.

B.   Evidence Against a Functional Relationship

Where a product merely serves as a support for printed matter, no functional relationship exists.

• Such a situation would occur for a hatband with images displayed on the hatband but not arranged in any particular sequence.

II.   FUNCTIONAL RELATIONSHIP BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS) MUST BE NEW AND UNOBVIOUS

Once a functional relationship between the product and associated printed matter is found, the investigation shifts to the determination of whether the relationship is new and unobvious.

• For example, a claim to a color-coded indicia on a container in which the color indicates the expiration date of the container may give rise to a functional relationship.
• The claim may, however, be anticipated by prior art that reads on the claimed invention, or by a combination of prior art that teaches the claimed invention.

III.   MACHINE-READABLE MEDIA

When determining the scope of a claim directed to a computer-readable medium containing certain programming, the examiner should first look to the relationship between the programming and the intended computer system.

• Where the programming performs some function with respect to the computer with which it is associated, a functional relationship will be found.
• For instance, a claim to computer-readable medium programmed with attribute data objects that perform the function of facilitating retrieval, addition, and removal of information in the intended computer system, establishes a functional relationship such that the claimed attribute data objects are given patentable weight.

However, where the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.

• For example, a claim to a memory stick containing tables of batting averages, or tracks of recorded music, utilizes the intended computer system merely as a support for the information.
• Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the computer.

A claim directed to computer readable medium storing instructions or executable code that recites an abstract idea must be evaluated under 35 U.S.C. 101.

 

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