- Actually offer a narrower construction intead of simply saying "the reference has nothing to do with [claim term]."
- Offer evidence to support your construction. The best evidence is a dictionary or technical dictionary.
- Get your evidence into the record before the Appeal Brief.
- Check to see if statements in the spec undercut the narrower meaning; if so, you're less likely to win.
In Ex parte Anonsen, the claim terms at issue were "hyperlink" and "hypermedia link." Neither the Appellant nor the Examiner offered an explicit claim construction. The Appellant's argument was simply that the relied-upon portions of the reference "have nothing to do with providing hypermedia links." The Board's characterized the Examiner's "apparent position" as "any kind of 'link' is a 'hypermedia link.'" Despite the lack of a clear issue, the Board had no trouble finding that "hypermedia link" and "hyperlink" are terms of art, and that the Examiner's interpretation was too broad:
A hypermedia link has two ends (anchors) and a direction which starts at the source node or object and points to the destination or target node or object. Anyone who has ever clicked on a hyperlink in a Web page to go to another Web page is familiar with the concept of a hypermedia link. The fact that there is some connection or link or path between the profile service instance and the external data store in Kumar does not in any way suggest that that path is specified by a "hypermedia link." While Kumar does contain the word "link," it does not describe the use of "hypermedia links" or "hyperlinks," which are terms of art.
The next case, Ex parte Marrigis, shows that you should have evidence of some sort, whether it's your own spec, a reference, or extrinsic evidence.
Appellant asserts that “the term ‘clock signal’ is a well known term of art, and . . . a ‘reference signal’ is not a clock signal, as a clock signal drives a circuit and a reference signal does not”. No factual evidence is submitted by Appellant to support this asserted difference in reference and clock signals, and, therefore, the assertion is an unsupported attorney argument and a conclusory statement that is deficient for rebutting a prima facie case of obviousness. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
The final case, Ex parte Pangrle tells us that a) external evidence must be submitted before the Brief; and b) a dictionary is generally considered better evidence than technical articles.
The documents submitted belatedly by Pangrle are a fragment of a technical article and some technical abstracts. As such, they do not “endeavor to collect the accepted meanings of terms used in various fields of science and technology,” and they therefore lack the general authority which our reviewing court has recognized sets dictionaries, and especially technical dictionaries, “among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005).
Notably, the dispositve factor in Ex parte Pangrle was not the belated evidence — it was the Applicant's own spec. The Applicant argued that the claim terms "switching body" and "switching material" were terms of art: an element "capable of two or more resistant states.” Under this construction, neither term read on the prior art's capacitor. But the Board found that the specification "[did] not distinguish the switching body or the layer of switching material from the layer of insulating material."
Indeed, the 929 Specification teaches, “[a] layer of switching material 118 is deposited or grown on the conductive layer 116, . . . [t]his layer 118 is an insulator ... ; and “[a] layer of switching material 158 is deposited on the resulting structure, . . . [t]his layer 158 is an insulator, as described above”. Pangrle has not directed our attention to any disclosure in the 929 Specification that indicates that some further special property of the insulating layer is required. Indeed, the 929 Specification indicates that “any other suitable material” (Spec. 4, ll. 4-5) may be used as the insulating material that serves as the “switching body.”
My two cents: Some will object to arguing for a narrower meaning of a term of art, because you're giving up claim scope through prosecution disclaimer. True — but in such a scenario the accused infringer has a good case for the narrower meaning anyway. And although the BPAI performs claim construction, should you count on the Board to choose in your favor if you don't bring up the issue?