Sunday, October 3, 2010

Federal Circuit says different claim elements are interpreted as distinct components

A new post "Two Separate Things Are Not One Thing" on the American IPA blog discusses annoying rejections for a "claim to A+B, where A and B are separate items, over a reference that only discloses A, the rationale being that 'A is both A and B.' "

American IPA points out that this summer's Becton opinion from the Federal Circuit includes a great quote to fight this sort of rejection:
Where a claim lists elements separately, "the clear implication of the claim language" is that those elements are "distinct components" of the patented invention.
(Becton Dickinson and Co. v. Tyco Healthcare Group, slip op. page 10, quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004 )).

I'll be watching to see if the BPAI starts using Becton. I blogged earlier (here) about several BPAI decisions that relied on the same rationale to reverse anticipation rejections. In those decisions, the BPAI cited to Lantech, Inc. v. Keip Machine Co (1994) and In re Robertson (1999) as Federal Circuit precedent. Actually, it seems that Gaus v. Conair, quoted in Becton, might be the clearest statement of the proposition.


  1. Karen, it's possible that I'll want to cite this case but forget its name. I see a bunch of labels on the right side of this page, but I do not see from your blog post which labels will be associated with the post. Am I missing something, or do I need to look at all the labels and select which seem to be the likely associations? Thanks for your hard work.

  2. > do not see from your blog post which labels
    >will be associated with the post.

    I've updated the post to include labels. Look at the very bottom of the post -- you should see "case law you can use", "claim construction" and "Federal Circuit".

  3. "I've updated ..."