Ex Parte Alholm

August 12, 2011 – Blog Post

“…a claim cannot be compared to the prior art until it is sufficiently interpreted” - Ex Parte Alholm et al.

In Ex Parte Alholm et al.’s appeal (Appeal 2010002702, in application serial no. 11/510,320, decision issued August 8, 2011), the Board of Patent Appeals and Interferences (BPAI) affirmed in part the appealed rejection. This discussion will focus on the rejection of Claim 1 which was reversed by the BPAI and which includes the most interesting elements of the decision.

Claim 1 is directed to an infusion pump that includes first and second reservoirs which are discrete and fluidly isolated from one another. The Thompson reference was cited as anticipating Claim 1 under 35 U.S.C. §102(b). The Thompson reference describes an infusion apparatus which includes a plurality of separate fluid pumps connected to a single output port. The Examiner stated in the appealed rejection that “although the outlet conduits join up before reaching the patient, the Examiner notes that there is no requirement in the claims that the systems remain isolated up to the point of delivery of the agents to the patient.”

The Board found that “the Examiner’s interpretation of claim 1 was not reasonable when read in the light of the ‘320 specification.” In formulating its decision the board relied upon In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), which states that claim terms are given their “broadest reasonable meaning…in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In addition, MPEP §2111 states: “During patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification…the broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach.”

In Ex Parte Alholm et al., the Examiner took an approach to claim interpretation which is often seen at the USPTO. In effect, the Examiner interpreted the claims based on a broadest reasonable interpretation in a vacuum and not in light of the specification. This approach was criticized by the BPAI and was cause for the rejection of Claim 1 to be overturned.

Therefore, a lesson that can be learned from this decision is that addressing claim interpretation and arguing against the Examiner’s application of the broadest reasonable interpretation standard should be considered when filing an appeal at the BPAI. It is easy to forget that the broadest reasonable interpretation standard corresponds to the usage which would be given by one of ordinary skill in the art when taking into account the disclosure in the specification. Many appeals focus on points of law and never consider addressing claim interpretation. Although the BPAI is able to address this issue even when it is not first raised, chances for a successful appeal can be augmented if claim interpretation is first raised by the Appellant.