The Inventors' Definition Of A Claim Term In The Specification Controls The Interpretation Of That Term In Assessing The Relevant Scope And Content Of The Prior Art

January 27, 2012 – Blog Post

In ex parte Theobald et al (Appeal 2011-011509; Application serial no. 11/421,615) at issue was whether in assessing the prior art’s teachings and exclusions, can the Examiner properly ignore explicitly disclaimers in the specification even if such a disclaimer is not in the claims. 

The claims at issue are methods of using an antibacterial doxycycline to inhibit unwanted thrombin generation.  The prior art of Levy was cited for it’s teachings of using tetracycline compounds to treat ischemia and stroke (two apparent conditions that could lead to the unwanted thrombin generation as described in Theobald’s specification).  The general formula of the tetracycline compounds taught by Levy was of sufficient breadth to include doxycycline and was so recited in one of the published Claims (Claim 42).  One of the core issues of the dispute was whether the Examiner could properly ignore the disclosure in Levy’s specification that “expressly disclaims doxycycline from the definition of the term ‘tetracycline compound’” as the Examiner’s focus was on Claim 42 which did not include that disclaimer.

The Board reversed the Examiner’s obviousness rejection:

We agree with Appellants that Levy does not suggest the use of doxycycline as a treatment (see FF 2). We also agree that the disclaimer in paragraph [0045] of Levy operates to exclude doxycycline from claim 42, since the preamble of Levy’s claim 42 states “said tetracycline compound is of formula I” and paragraph [0045] defines “tetracycline compound” to exclude doxycycline. See Serrano v. Telular Corp., 111 F.3d 1578, 1582 (Fed. Cir. 1997) (“The inventors’ definition and explanation of the meaning of the word … as evidenced by the specification, controls the interpretation of that claim term). Here, the phrase “tetracycline compound” is expressly defined to exclude doxycycline, so the use of that term in claim 42 is controlled by the express definition in Levy’s specification.