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Ex parte WILHELM HEINE: PTAB Rejects Examiner’s Unreasonable Claim Construction

During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims.  When responding to these rejections, it is important to remember that there are limits to an Examiner’s broadest reasonable interpretation.  In Ex parte Wilhelm Heine (“Heine”), the Patent Trial and Appeal Board (“PTAB”) rejected the Examiner’s unreasonable claim construction stating that “‘[t]he correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.’”  Appl. No. 14/076,456, Decision on Appeal (Sept. 25, 2019) (hereinafter “Heine”), at 6 (quoting In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)).  Instead, Examiners need to rely on a claim interpretation that is consistent with the core, inventive concept of the invention.  Id.

The application at issue was U.S. Patent Application No. 14/076,456 directed to methods and an apparatus for membrane separations of complex flow media compositions.  According to the specification, the traditional approach was to use multiple, successive separation mechanisms to isolate products within complex compositions that may contain multiple liquid phase components and possibly gaseous components.  The specification disclosed a single separation apparatus and method that advantageously achieved the separation of the complex flow media compositions.

During prosecution, the Examiner repeatedly rejected the claims over the prior art by construing an undefined claim term to mean something that was inconsistent with the Applicant’s specification.  While the Examiner’s claim construction allowed for mapping of the claim term onto multiple separation operations found within the prior art, that claim construction was inconsistent with the core, inventive concept of a single separation apparatus and method.  The PTAB reversed the Examiner and further stated “that the Examiner’s articulated reasoning is not based on some rational underpinning to support a conclusion that a person skill in the relevant art would have combined the references in the manner claimed.”  Id. (emphasis in original).

In view of the guidance from Heine, practitioners may want to keep the following in mind.  In arguing against an Examiner’s broadest reasonable interpretation, it may be beneficial to remind the Examiner that the inquiry should not be made in isolation, but needs to be made in accord with the specification.  Just because a claim term may not be explicitly defined in the specification, an Examiner cannot simply set forth any claim construction he or she desires.

Heine also reminds us of the benefit of defining claim terms within the specification during drafting.  By taking the time to define and to explain claim terminology, an applicant can later point to a specific portion of the specification in support of arguments to refute an initial rejection by an Examiner.  Support, even if just in a single paragraph, focuses the argument and avoids the need for an Examiner to synthesize and understand the entire specification just to interpret the claim terms.  

The timing of Heine is also informative.  After filing the Notice of Appeal, the PTAB decided Heine just over two years later.  If an Applicant can wait that two-year period, appealing may be an option when dealing with an Examiner that maintains a claim construction that is overbroad -- especially if the disputed claim term is essential to the core invention. 

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About this Author

Andrew Skale, Mintz Levin Law Firm, San Diego and Los Angeles, Intellectual Property and Litigation Law Attorney

Andrew’s practice is focused on litigation involving patents, trademarks, and copyrights along with handling issues with entertainment law. In addition, Andrew has prosecuted hundreds of patents and trademarks before the US Patent and Trademark Office.

Andrew is frequently sought after for his legal expertise. He has appeared on CNBC’s Squawk Box and has been featured on KCEO radio as a commentator on intellectual property law. He served as an expert witness on trademark law in California state court and has spoken at the University of...

Justin Leisey Patent Lawyer Mintz

Justin is a registered patent attorney with a background in chemical engineering. He drafts and prosecutes US and foreign patent applications for clients in a variety of industries, including the life sciences, biotechnology, medtech, pharmaceuticals, energy and sustainability, cleantech, manufacturing, and technology sectors.

Justin regularly conducts patent searches and drafts invalidity/infringement and patentability opinions, assesses risks associated with freedom-to-operate issues, drafts landscape analyses and competitive intelligence reports, and identifies whitespace opportunities. His work also includes performing due diligence on third-party intellectual property, reviewing and drafting IP provisions of transactional and licensing agreements, and handling patent litigation, inter partes review, and interference matters.  

Prior to joining Mintz, Justin was an associate in the San Diego and Boston offices of an international law firm. He also worked as intellectual property counsel and as a patent agent/law clerk at Reflexite Corporation (now part of ORAFOL GmbH), a manufacturing company producing reflective materials. In addition, he taught executive-MBA class sessions on intellectual property protection at San Diego State University and maintained an active pro bono practice.

Before he earned his law degree, Justin worked as a process engineering manager and as a process engineer at Reflexite, and as a production supervisor/engineer and process engineer at Ablestik Laboratories, Inc.

He has experience working with technologies including drug delivery polymers, nutraceuticals, syringes, endoscope tube sets, laparoscopic staplers, medical devices, lithium batteries, ultracapacitors, electronic devices, engineered fuels, graphene composites, liquid-impregnated surfaces, microtrenching, polymers, polymer processing, rotary/linear actuators, basalt fibers, and variable data printing.