Wednesday, April 14, 2010

Arguing the meaning of claim terms: strict definition is not required

Takeaway: Consistent use of a claim term in the specification can help in arguing that the Examiner's interpretation of the term is unreasonable. Importantly, a strict definition of the term is not necessary. However, winning this argument is more likely when your specification doesn't also contain statements which attempt to broaden the term. Such statements often undermine your argument that the Examiner's broad interpretation is unreasonable.

The case Ex parte Bobba is a good illustration of the kinds of statements in the spec that help your argument "the Examiner's interpretation is too broad." This case also shows how an Applicant can use such statements in an argument.
Ex parte Bobba
(Appeal 2008-4179; Appl. No. 10/033,008; Tech. Center 2800)
Decided September 30, 2008

The technology in Bobba involved packaging for integrated circuits. Here is a representative claim on appeal:

1.  A bump and vias structure, comprising:
a metal layer;
a plurality of vias connecting the metal layer to another metal layer;
a bump mounted on the metal layer; and
a first slot formed in the metal layer between the vias and the bump.

The main issue on appeal was the meaning of the term "bump." The Applicant argued that "bumps are conductive deposits on a top metal layer of an integrated circuit (see bumps (44) in Figure 4a of the present application)." The Examiner used a dictionary definition of bump: "a relatively abrupt protuberance on a surface." 

Though not framed by the parties in this manner, it's clear from reading the file history that the claim construction issue is dispositive of the anticipation rejection. The Applicant argued, and the Examiner agreed, that the only slots disclosed in the reference were between sets of vias. Therefore, the reference only anticipated when the vias in the reference were read on the claim term "bump," which was only possible when bump was understood as "protuberance."

How did the parties arrive at their respective claim constructions? The Examiner, relying on MPEP 2101.01 "Plain Meaning," argued that since the Applicant did not provide a clear definition of "bump" in the specification, the plain meaning controlled. In the Reply Brief, the Applicant pointed out that Philips v. AWH Corp. clarifies the understanding of "plain meaning": "[T]he ordinary and customary meaning of a claim term is the meaning that the claim term would have to a person of ordinary skill in the art in question at the time of the invention." The Examiner's dictionary definition ignored what "bump" means to a POSITA. The Applicant reiterated that a POSITA would understand "bump" as a "conductive deposit on a top layer of an integrated circuit," pointing to portions of the specification that used this description of "bump."

The Board found that "the specification provides ample guidance and context for interpreting the term bump," pointing to various paragraphs in the specification and essentially adopting the Appellant's construction. Furthermore, the Board found the Examiner's construction was inconsistent with the specification, because it read "bump" on a structure described in the reference as a "via":

Moreover, the specification only uses the terms, "vias" and "bumps," in a mutually distinctive context. Contrary to the Examiner's position, the specification contains absolutely no indication that the term "bump" was intended to extend beyond its conventionally accepted meaning in the art so as to further include internal via structures.

The Board concluded with this useful analysis:

To summarize, intrinsic evidence of a claim term's plain meaning is generally to be given greater weight than extrinsic evidence of a dictionary definition. Appellants have provided a reasonable rationale of why their asserted interpretation is consistent with the plain meaning of "bump" as understood by one of ordinary skill in the art of semiconductor device packaging. The Examiner has not provided any evidence that the broader dictionary definition was one of the accepted usages for the term "bump' as it was used in the semiconductor packaging arts. Therefore, we are persuaded that the Examiner's interpretation of "bump" is overly broad and not reasonable. As such, we cannot sustain the anticipation rejection of claims 1-14.

My two cents: I've seen some cases where the Applicant offers evidence of the meaning of a claim term. Such evidence may come in the form of a dictionary definition (which might be a technical dictionary) or a declaration from a POSITA. The Applicant won here even without such evidence, because the spec itself provided guidance as to (though not a strict definition of) the meaning. I don't think you can expect to win without evidence if your spec contains no guidance at all on the meaning.

But in the end, I think the Applicant won here because the spec didn't contain any statements which undermined the argument. If you've got a spec contains a broadening statements ("widget is not limited to this usage, but should also be interpreted to include foobars and wikis"), then you'll probably have a much harder time arguing that the Examiner's interpretation is too broad.


  1. Contrary to the Examiner's position, the specification contains absolutely no indication that the term "bump" was intended to extend beyond its conventionally accepted meaning in the art so as to further include internal via structures.

    ^that was what sealed the deal.

  2. Anonymous, if I understand your comment correctly, we're in agreement. That's what I was getting in my post when I said "Applicant won here because the spec didn't contain any statements which undermined the argument."

    So many specs are *full* of statements which absolutely intend to extend a term beyond its conventionally accepted meaning.

  3. updated: I just found an older piece of art that uses the term bump to describe an internal via structure. Apparently this came into fashion with the B2it tech (and other similar ones). They form a bump and then force the bump up (or down, or both) through the insulator. So, perhaps the conventionally accepted meaning needed to be updated. Even so, and I certainly wouldn't comment on the specifics of the case, I'm not sure if the outcome of this case would change, either because of the bs "well the spec doesn't include anything that extends the term" or because even under the expanded def the art still might not be useful in rejecting.

  4. >perhaps the conventionally accepted meaning
    >needed to be updated.

    Two comments about conventionally accepted meaning.

    One, the time of filing is the relevant time. [Your reference to "older" piece of art suggests that you may be taking this into consideration.]

    Two, in a particular case, somebody has to introduce evidence about the meaning. In Ex parte Bobba, the Examiner had no evidence, and the Applicant did (the spec). The Board found the Applicant's evidence to outweight the Examiner's bald assertion.

    >bs "well the spec doesn't include anything
    >that extends the term

    Why is this bs? The spec is evidence of the meaning of the term.

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