What's In A Name
What’s in a name? Juliet’s famous question about Romeo’s Montague name brings about one of the most well-known Shakespeare quotes - that a rose by any other name is still a rose. At the USPTO, examiners have a tendency to be very flexible in mapping claim elements to prior art references under the guise of the Broadest Reasonable Interpretation. For example, it would not phase most patent prosecutors if an examiner alleged that a claim to a “flower” was anticipated by a prior art reference disclosing a “thorn” under the theory that a flower, under the BRI, can refer to the whole stem and flower, and thus include thorns. Strained and even nonsensical interpretations are common, and maintained even up to appeal, as we see in a recent example regarding engine pistons (15/512,560) to Volvo Truck.
Here, the invention relates to a reciprocating machine, such as a combustion engine, having groove patterns provided in cylinder walls for collecting oil. Claim 1 is below:
1. A reciprocating machine, comprising:
a cylinder comprising an internal cylinder wall;
a sump for collecting oil;
a pump for pumping oil from the sump to the
cylinder;
a piston movable in the cylinder between a top
position and a bottom position, the piston comprising an upper ring pack and a
lower ring pack disposed around a circumference of the piston and spaced from
each other by a first distance; and
a circumferential collector groove in the cylinder
wall in a position that is above the lower ring pack when the piston is in the
top position and that is below the upper ring pack[,] when the piston is in the
bottom position, the collector groove including at least one hole connected to
a conduit connected to the sump configured for returning oil from the collector
groove to the sump.
The Examiner cited prior art, but apparently only the piston rod of the prior art would satisfy the claim limitations related to the piston, and so alleged that a “piston rod” was a “piston.” In other words, since pistons include piston rods, a piston rod was a piston. Volvo cited the dictionary and noted that a piston was something that was “a sliding piece moved by or moving against a fluid pressure …” Further, the cited art clearly differentiated between its piston and piston rod (with separate numerals), but the Examiner was undeterred and summarized the interpretation as follows (thus forcing Volvo to appeal).
On appeal the PTAB was unconvinced by the Examiner’s rationale and noted that the prior art’s use of the term was relevant, and further was consistent with Volvo’s proposed interpretation:
“[C]laims under examination before
the PTO are given their broadest reasonable interpretation consistent with the
specification.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir.
2012) (emphasis added). Furthermore, “[p]rior art references may be ‘indicative
of what all those skilled in the art generally believe a certain term means . .
. [and] can often help to demonstrate how a disputed term is used by those
skilled in the art.’” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir.
1996)). “Accordingly, the PTO’s interpretation of claim terms should not be so
broad that it conflicts with the meaning given to identical terms in other
patents from analogous art.” Id. (emphasis added).
* * *
... neither Appellant’s piston rod 35 nor
Bochnak’s piston rods 24 are “moved by or moving against fluid pressure;” each
merely transmits the motion of pistons 27 and 30, respectively.
