BPAI finds claim interpretations involving destructive force to be unreasonable

Takeaway: In a variety of cases involving claim terms like "removable" and "detachable," the BPAI has reversed prior art rejections when the Examiner has interpreted these terms to allow for destructive forces rather than the forces encountered during normal operating conditions.

Details:

In Ex parte Miles (BPAI 2011) the claim terms at issue were "legs adapted to be removably attached" and "legs adapted to be removably secured." The Examiner took the position that neither phrase was a positively recited limitation, and thus only required the ability of the reference structure to be removed. The Examiner then stated that “the legs 76 of Henriques are capable of being removed, even if it requires a blow torch.” (Emphasis added.) The Board found the Examiner's interpretation to be unreasonable since it read the word "removably" out of the claims:

Under the Examiner’s interpretation, because it is possible to remove anything using a blow torch, every means of attaching or securing two parts is removable. This interpretation is incorrect because it would effectively expunge the word “removably” from the claim language. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous).

The Board then found that the ordinary meaning of the word "removably" was consistent with the usage in the Specification, which described removable legs as being attached by screws. Finally, the Board concluded that:

An artisan would interpret that removably secured or attached legs are those that they may be removed in the ordinary sense of the word, such as by unscrewing a screw. ... Consequently, removal by means such as a blow torch is not within the scope of claims 2, 10, and 16. (Citations omitted, emphasis added.) 

Ex parte Bernard (BPAI 2011) involved claims to a cable duct coupler. The phrases at issue were "releasable locking mechanism" and "release mechanism." After noting that "[v]irtually any two objects locked together can be separated via destructive means," the BPAI found that interpreting the phrases "to embrace a so-called 'release' that results in the destruction of one or more of the locked objects" would be unreasonable, as it would fail to give appropriate weight to release/releasable (citing Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)).

In Ex parte Wilson (BPAI 2009), the BPAI considered claims to a steering wheel arm rest. The independent claim included the phrase "a second section ... deforming out of interference with the vehicular operator’s ability to operate the steering wheel when the pressure from the operator's body ...." According to the Examiner, this element was taught in the reference by an arm rest whose position could be changed after unscrewing. The Board found this interpretation to be unreasonable, noting that a structure that "requires disassembly and reassembly and permits the driver to push against cannot reasonably be considered a structure that is capable of deforming out of interference as has been claimed."

In Ex parte Mogensen (BPAI 2011), the BPAI considered claims to an injection device. In interpreting the claim limitation "part of said infusion set positioned removably from and within said device housing," the Examiner said that "removably" required that the reference structure "only need be capable of performing the recited function of being removable, [rather than actually] performing the function of being removed." According to the Examiner, the needle in the reference "is capable of being removed by cutting, snapping, breaking, etc." The Board found that this interpretation was unreasonable. "A person of ordinary skill in the art would not removably position Miskinyar’s needle 22 with respect to the housing 10 by cutting, snapping, or breaking the needle 22 because this might leave a piece of the needle in the patient thereby possibly harming the patient."

The claims in Ex parte Smith (BPAI 2012) were directed to a medical device. The claim term at issue was a "passive articulation joint for connecting an end effector to a control handle.." The Examiner asserted that this term read on the reference structure because "the end effector can be moved or articulated via a great enough external force, even if such an action would damage the device." The Board found this interpretation to be unreasonable: "Any joint would fail or yield under a great enough force. The
Examiner’s interpretation essentially disregards the term 'passive'. "

TechPharma Licensing v Novo Nordisk (BPAI 2012) was a reexamination appeal for claims to an injection needle. The claim term at issue was "a lock for irreversibly locking the safety shield in its biased position." The BPAI reviewed the Patentee's specification and several dictionaries to arrive at the following interpretation:

In view of these definitions, we interpret the limitation at issue as requiring a lock which cannot be "unlocked" so that the safety shield is locked in the extended position so that it can no longer be retracted (for example, without damaging the lock mechanism) and which lacks a structure or mechanism (including a special tool) to unlock it. With such interpretation, we give full weight to the term "irreversible" and the limitation "a lock for irreversibly locking" being mindful that operation of most mechanical devices such as locks can be reversed by force if damage thereto is acceptable.

My two cents: The Board puts "reasonable" back in "broadest reasonable interpretation." The approach taken by the Board in these cases is representative of most mechanical cases I've seen -- with an important stipulation. Namely, these are all cases in which the Board treated the claim language at issue as a limitation that affected structure,  rather than "capability" or "intended use" limitations. Which is interesting, because its not inconceivable that the Board could find "adapted to be removably secured" and "for irreversibly locking" to be capability/intended use. Yet the Board summarily concluded that those phrases were structural limitations.

Getting out of the realm of "capability" seems to be the key to getting an interpretation in which normal operating conditions are taken into account and blow torches are ignored. If you're in the realm of "capable" then you get results like Ex parte Stryker Endoscopy (blog post here). In that case, a "needle configured to drive a suture against tissue without severing the suture" was interpreted to cover a blunt tip because with enough force, such a tip would perform the claimed function.