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Author Topic: Broadest Reasonable Interpretation???  (Read 789 times)

X_Factor

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Broadest Reasonable Interpretation???
« on: 06-08-11 at 01:25 pm »

So what does this quote mean? It's in MPEP 2111. "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim."

What exactly does "reading a claim in light of the specification" mean?
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Oh, Crud

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Re: Broadest Reasonable Interpretation???
« Reply #1 on: 06-08-11 at 02:01 pm »

So what does this quote mean? It's in MPEP 2111. "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim."

What exactly does "reading a claim in light of the specification" mean?

Not positive I get the gist of your question, so I'll just toss some exemplaries and hope that helps.

Reading limitations into claims:  Claim term is "big dog".  Spec always recites "big smelly hairy dog that likes to chase cats".  Reading or importing into the claim:  You view the claim scope of "big dog" as being limited only to the more narrow "big smelly hairy dog that likes to chase cats".

Reading claims in light of the spec:  Claim term is "big dog".  Spec always recites "big smelly hairy dog that likes to chase cats".  Interpreting the claim in light of the spec:  You view the claim scope of "big dog" as being related to canines, and not reading on prior art related to human feet, despite the fact that people often refer to their feet as "dogs" when they say, "man, my dogs is tired". 

(I forego the opportunity to use exemplaries relating to "puppies" and how that term is sometimes used to refer to another human feature)
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X_Factor

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Re: Broadest Reasonable Interpretation???
« Reply #2 on: 06-08-11 at 03:41 pm »

So what does this quote mean? It's in MPEP 2111. "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim."

What exactly does "reading a claim in light of the specification" mean?

Not positive I get the gist of your question, so I'll just toss some exemplaries and hope that helps.

Reading limitations into claims:  Claim term is "big dog".  Spec always recites "big smelly hairy dog that likes to chase cats".  Reading or importing into the claim:  You view the claim scope of "big dog" as being limited only to the more narrow "big smelly hairy dog that likes to chase cats".

Reading claims in light of the spec:  Claim term is "big dog".  Spec always recites "big smelly hairy dog that likes to chase cats".  Interpreting the claim in light of the spec:  You view the claim scope of "big dog" as being related to canines, and not reading on prior art related to human feet, despite the fact that people often refer to their feet as "dogs" when they say, "man, my dogs is tired". 

(I forego the opportunity to use exemplaries relating to "puppies" and how that term is sometimes used to refer to another human feature)

Thanks for your response. I was just wondering what "reading in light of the spec" means and how it is different from "reading limitations from the spec into the claim.

From your "reading claims in light of the spec" example, it still seems like you're reading the limitation "dog" from the spec into the claim. What am I missing?
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JimIvey

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Re: Broadest Reasonable Interpretation???
« Reply #3 on: 06-08-11 at 06:56 pm »

What am I missing?

Reading the claims in light of the specification means looking to the specification to understand how the applicant uses words in the claims.

Reading limitations from the spec into the claims means using the spec to add words to the claims that really aren't there.

I'll give my own example from a patent I reviewed many years ago.  The invention pertained to integrated circuit contact pad and dispersing high voltage that might be applied to the IC by static electricity in a person's fingertips.  The claim recited aspects of the contact pad in terms of length and width and such.

The examiner interpreted the length to be the longer dimension of the pad and the width to be the shorter dimension.  However, it was clear from the spec (and the convention in the art) that the length was always measured along the path of electricity flow and width always measure across that path.  So, the examiner had misinterpreted "width" and "length" -- in the case of the patent in question, the width was several times the length.  The examiner failed to read the claims "in light of" the specification to understand which dimension is "length" and which is "width".

Now, I'll extrapolate to give an example of impermissible reading of spec limitations into the claims.  Suppose the spec states that particularly good results are achieved of the width is at least four times the length, but that the claim in question includes no such limitation.  It would be impermissible for the examiner to interpret the claim as requiring that the width be at least four times the length of the contact pad.

The bottom line comes down to interpreting intend of the applicant (and how skilled artisans would read it).  An attempt to define a term should be distinguished from illustrative examples.

Regards.
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Oh, Crud

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Re: Broadest Reasonable Interpretation???
« Reply #4 on: 06-09-11 at 07:02 am »

From your "reading claims in light of the spec" example, it still seems like you're reading the limitation "dog" from the spec into the claim. What am I missing?

I like JimIvey's example, but to comment directly on this question, I am not reading "dog" into the claim.  The words "big dog" are already in the claim as written.  I am in that example only using the specification to learn that dog in the claims must mean the canine animal, and can not read on people's feet, or other uses of the word "dog" such as in manufacturing and in boating, the hooks or what not for tying off lines.
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khazzah

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Re: Broadest Reasonable Interpretation???
« Reply #5 on: 06-09-11 at 07:45 am »

I was just wondering what "reading in light of the spec" means and how it is different from "reading limitations from the spec into the claim.

Think of a continuum: "ignoring the spec completely" is at one end; "reading limitations from the spec" is at the other end; and "reading in light of the spec" is in the middle.
 
When you interpret a claim, your interpretation will fall somewhere along that continuum. But there is no hard and fast rule for judging where you'll end up. You learn this only with experience in patent pros.

Oh, Crud had a great example using "dog". If your invention is related in some way to canine animals, then interpreting "dog" as "a device used for gripping or holding heavy objects" is impermissible because this clearly "ignores the spec completely." Similarly, interpreting "dog" as "terrier" because your spec discusses terrier as a type of dog is also impermissible because this clearly "reads limitations from the spec".

The correct interpretation is somewhere in the middle. In this case, something along the lines of "domesticated canine" or just "canine".
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X_Factor

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Re: Broadest Reasonable Interpretation???
« Reply #6 on: 06-09-11 at 08:55 am »

Thanks everyone for the response! It's starting to make more sense now.
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