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[fb]

How do examiners/courts look at definitions? For example, what definition do you get from the word "skateway" in the following reworded US application?:

"The following is a device and method that relates to the roller skating rink technology which was devised over the last 35 years and patented as US Pat 12345678 issued in 1981, and other patents issued subsequently. Existing large roller skating rink systems marketed under the brand Super Duper Looper (R), or SDL include in-the-ground troughs or "skateways". Many small-scale roller skating rink systems have been used for training, research and amateur use under the existing patents referenced above. The current device and method can be applied in roller skating rinks, including Super Duper Looper rinks. A roller skating rink may include a trough or skateway having a skateway bottom and skateway sides."

That's all it says about what a "skateway" is. It assumes you already know. In the previous patents referred to, it does give this definition:

"The skateway is any structure through which skaters may be directed to skate, and suitable safety conditions may be provided. The skateway preferably has a trough-like configuration, having walls on the side which are elevated with respect to a skater-supporting bottom section, and having a width ranging from the tallness of the side walls to much greater. The side walls may be vertical and ninety degrees to the bottom section, or may sweep from a horizontal to a vertical relation. Such skateways are known in the art."

The application shows diagrams of a "skateway", and all of his previous patents, applications, research articles, work history, and current employment use the exact same diagrams. At any point do you get the impression that a "skateway" could be a narrow vertical enclosed tube where skaters freefall while in contact with the walls of the tube?

[Simpletown]

If you cited the real patent it would have been more helpful. The random cites you provide don't seem to immediately include a tube.  Examiners generally disregard definitions or make up tortured ones until you take them to appeal. If the words are exactly the same yet the meaning is different in the art or specification you may have to go to the board or farther. If the explicit wording is there, even if the words define different things, no-one seems to care. If the words aren't the same (even if the inventions are identical amazingly enough) you can often expect a reversal at the appeal stage. This is appears to be the general outcome. It varies on an individual basis. The courts define terms based upon the information the litigants present to them. This can change things dramatically. Just like examiners, the judges take into account what they want the outcome of the case to be. I think Nix v. Hedden, 149 U.S. 304 (1893) sums it up pretty well. Even if the laws are written explicitly and the science all supports the same common definition of a term, whatever favors the courts beliefs will still be the decision. Thus the U.S. Supreme court defined a tomato as a vegetable and not a fruit.

[fb]

It's close enough to the real patent, I think. The question is will examiners use his description of a skateway: "any structure through which skaters may be directed to skate, and suitable safety conditions may be provided". This would include a vertical tube.

[Simpletown]

The definition is very broad and could cover anything. If it isn't in the claim, or if the patent is old enough, you don't have to worry about infringement. And as far as obviousness goes it would be hard for the examiner to argue that such an expansive definition would lead anyone to think specifically of a tube. I think you would likely win over such a claim construction. I just like to advise people to remember that at the end of the day you are dealing with people who can sometimes have different logic than you. It still comes down to rolling the dice if you want to play the game.

[fb]

I guess my question is, when it comes to non-standard words like "skateway" which are made up of standard words (skate, way), do examiners use the standard meaning of the separate words (skating along a way), or do they use the definition that the inventor gives, which in this case is "any structure through which skaters may be directed to skate" ?

[klaviernista]

I guess my question is, when it comes to non-standard words like "skateway" which are made up of standard words (skate, way), do examiners use the standard meaning of the separate words (skating along a way), or do they use the definition that the inventor gives, which in this case is "any structure through which skaters may be directed to skate" ?

Examiners give claim terms their "broadest reasonable interpretation consistent with the specification."  See MPEP 2111 and Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005).  This means that if the applicant defines in the specification a term that is used in the claims, the Examiner must give the term the broadest reasonable interpretation in view the definition in the specification (which, if the definition is drafted appropriately, will be the definition itself).  See In re Morris, 127 F.3d 1048, 1054-55(Fed. Cir. 1997) (The court held that the PTO is not required, in the course of prosecution, to interpret claims in appli­cations in the same manner as a court would interpret claims in an infringement suit. Rather, the “PTO applies to verbiage of the proposed claims the broad­est reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlight­enment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.”).

[khazzah]

I guess my question is, when it comes to non-standard words like "skateway" which are made up of standard words (skate, way), do examiners use the standard meaning of the separate words (skating along a way), or do they use the definition that the inventor gives, which in this case is "any structure through which skaters may be directed to skate" ?

... if the applicant defines in the specification a term that is used in the claims, the Examiner must give the term the broadest reasonable interpretation in view the definition in the specification (which, if the definition is drafted appropriately, will be the definition itself). 

OP's situation has an interesting angle: his definition is in a patent "referred to" by his own app:

The following is a device and method that relates to the roller skating rink technology which was devised over the last 35 years and patented as US Pat 12345678 issued in 1981, and other patents issued subsequently. ...
[Those patents say:] The skateway is any structure through which skaters may be directed to skate, and suitable safety conditions may be provided.

Does the definition in the other app control?

do examiners use the standard meaning of the separate words (skating along a way), or do they use the definition that the inventor gives

Examiners rarely put an explicit construction on record until you raise the issue. So I wouldn't expect the Examiner to use any definition at all until you a) raise the issue explicitly and b) point to the definition that you want. Once you do that, the Examiner will  either accept your definition or offer one of his own and explain why yours isn't appropriate.

[fb]

I see. Yes the definition is in his previous patent, not the current app. So if you "wouldn't expect the Examiner to use any definition at all until you raise the issue and point to the definition that you want", then the examiner must look at the previous patents. And there it says "The skateway is any structure through which skaters may be directed to skate, and suitable safety conditions may be provided".

I'm guessing the "suitable safety conditions" is moot/filler for the issue at hand. Our "skateway" is a vertical drop, like a fireman's pole but without the pole; just a tube for freefalling while staying in contact with the walls of the tube. For all mechanical and practical purposes, our "skateway" has nothing to do with his "skateway", with the one exception: Consumers will either buy his or ours; not both. So we are direct competitors. With this in mind, we would "raise the issue" that his definition for 35 years has been a horizontal open-topped tough, and ours has never been a horizontal open-topped tough; only a vertical tube.