Appellant’s Annotated Figure of Feldman Examiner’s Annotated Figure of Feldman
The Examiner rejected the claims based on Feldman, as a thick line could be drawn to meet the claim requirement that a straight line between the outermost of the snap features would pass through a portion of a center snap feature.
On appeal, Disney reproduced an annotated figure of Feldman alongside the Examiner’s annotated figure of Feldman, to highlight that the Examiner had purposely drawn a thick line through the figure of Feldman to support rejection of the claims.
Disney further argued that the term “line” referred to the mathematical definition which was a continuous extent of length without breadth, and that graphic representation of a line only has breadth because it is impossible to draw a line without any thickness.
Nonetheless, as the specification of the application did not require this special definition of a line, and as a dictionary definition supported that a line (in this case, a drawn line) would have at least some breadth, the Board found that the Examiner was reasonable in interpreting the claim language to include a thick line, as drawn above.
One big take away from this example is to remember during the drafting process of an application that terms used will be subject to BRI if they are not further explained in the specification. Though it is not practical to explain each and every term, below are 5 strategies to avoid the pitfall of the BRI causing claim terms to be interpreted incorrectly during patent prosecution (to the detriment of the inventor).
1. Describe Structural Elements Relative to One Another
Describe structural elements of the claimed apparatus relative to one another as much as possible in the specification. For example, if describing a box, describing a position of the walls of the box relative to one another and features on each wall of the box may be helpful. If the box has handles, describe a shaping of the handles, a positioning of the handle, sizing of the handles relative to one another, etc. The more detail, the better when describing structural element. Moreover, description comparing structural elements of an invention relative to one another can be very helpful during prosecution. Describing structural elements relative to one another may help to avoid situations as in the example, where an imaginary line that was not actually drawn in the figures was used in the claim language.
2. Include Reference Elements In Drawings
Actually drawing reference elements (axes, coordinate systems, planes, etc.) into the drawings can be a life saver. Since guidance in the MPEP for the BRI requires that the claim terms be consistent with the drawings, reference elements are excellent to include in the drawings to ensure clarity and avoid BRI leading to misinterpretation of claimed elements. For example, if claiming a box, include axes drawn through the box or planes of the box in the figures.
If the straight line in question for the above case had been included in the originally filed drawings, it probably would have been much more difficult to argue that the interpretation of the claim language was reasonable.
3. Describe Structural Features Relative To Reference Elements In Drawings
In addition to including reference elements such as axes, coordinate systems, planes, etc. in the drawings, make sure to describe elements of the invention relative to these reference elements.
Once again, the MPEP guidance for BRI is on your side if you include reference elements and utilize these reference elements in the description of the application, since a BRI of terms should be consistent with the drawings and definitions provided in the specification.
Continuing with the box example, you might describe walls in certain planes of the box being perpendicular or parallel relative to other planes of the box.
4. Describe Terms In Specification
If a term that is used in the application needs to have a specific meaning, make sure to include this specific meaning in the specification. Moreover, using multiple examples and providing multiple explanations for terms that are used to describe the core concepts of the specification may be helpful tools to avoid misinterpreted claim language during prosecution.
5. Check a Dictionary
When drafting an application, do not hesitate to pick up a dictionary. Especially when having to describe temporal aspects or structural features of an invention. Often it is not technically oriented words that trip up an application but rather words like “line”!