Case law you can use: claim terms are interpreted in the context of the claim as a whole

Takeaway: The next time the Examiner picks your claim terms apart one by one rather than considering how the limitations are linked together by the claim language, consider citing these two cases used by the BPAI in such a situation:

Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) ("proper claim construction ... demands interpretation of the entire claim in context, not a single element in isolation."); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) ("While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered....").

Details: Here are quotes from various BPAI decisions where the Board has applied Hockerson-Halberstadt and/or ACTV, Inc. to require the Examiner to consider the context of the claim as a whole.

Ex parte Abajian:

   We conclude that the Examiner’s overly broad interpretation is unreasonable because it ignores specific positively-recited claim limitations. We note that the disputed step of “enhancing” is expressly defined by the claim language itself to require “adding at least a portion of the contents of the metadata record to the extracted metadata.” We conclude that a broad but reasonable interpretation of the claimed “enhancing” step involves more than merely adding two nondescript metadata elements together.
   The Examiner appears to be focusing on the “enhancing” element in isolation and is ignoring the context of the claim as a whole. However, claim terms are not to be interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co.
(internal citations omitted.)

Ex parte Moore:

   The Examiner found that “[w]hether the delta is between available media stream output times among a plurality of devices or a single device is  not clear form [sic] the claim as recited.” We disagree with the Examiner.
   Based upon our review of the record, we conclude that the Examiner’s broad construction is inconsistent with the usage of the claim term “delta” as that term is recited throughout the claim. We note that claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co. ...
   [C]laim 1 specifically recites supra that the “delta between available media stream output times” is received from each output device. Thus, we find that because the claimed “delta” is received from each output device, the delta must necessarily represent the delta between available output times in a single device. ...
    [A]t most, Shaw discloses a delta between an output time and a master clock. Thus, we find that Shaw fails to disclose receiving from each output device a delta between available output times.
(internal citations omitted.)

Ex parte Saxena:

   In the Answer, the Examiner explains that “the transform criteria [in Periyannan] is whether the requested object is cacheable or non-cacheable based on the URL and header information of the request.”... However, if we adopt the Examiner’s aforementioned reading of “transform criteria” (as applied to Periyannan), we find the Examiner’s construction to be inconsistent with the usage of “transform” as that term is applied in the remainder of the claim. Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co. ...
   Therefore, we find that Periyannan’s URLs are not compared with transform criteria where (to be consistent with the remainder of the claim) the transform criteria identifies a specific transform that defines an action to perform on the first uniform resource identifier portion where a second request is generated based on the specific transform.
(internal citations omitted.)

Ex parte Templer:

   We agree with the Examiner that an ordinary and customary meaning of the term “code” is “a system of signals used in communication.” ... However, in claim 1, we note that the term “operator” modifies the term “code.” ... [W]e find that an “operator code” is narrower in that it implies a code that corresponds to an operator. Similarly, in claim 12, because the code associated with the operator is received from the operator, a person of ordinary skill in the art would infer that the code corresponds to the operator. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (the claims themselves provide substantial guidance as to the meaning of particular claim terms); see also ACTV, Inc. v. Walt Disney Co. ... As such, we find that a code associated with the device and the operator, as generally required by claims 1 and 12, implies a code that corresponds to the operator.
(internal citations omitted.)

Ex parte Bergert:

   The Examiner asserts that Henneuse discloses the number of openings because by inviting people, the event inherently has one or more openings. The Examiner may be correct if the claim merely recited at least one opening. However, the claims recite that the reservation information includes the number of openings, which requires an actual number, especially in view of the later recitations in the claims that the number of individuals is greater than the number of available openings. See ACTV, Inc., 346 F.3d at 1088. This interpretation is confirmed by the Specification, where the number of openings is used in the context of a limited number of slots in a golf reservation. See Vitronics Corp., 90 F.3d at 1582.  Henneuse does not disclose that an actual number of openings is provided on the reply page.
(internal citations omitted.)