Evidence-Based Claim Construction

One thing that can extend prosecution, particularly with examiners included to reject applications, is stretching interpretations. Whether that includes reading claim elements unreasonably broadly (under the guise of the BRI), or re-interpreting disclosure in a cited reference to be more or different than what it actually shows, examiners can often be intransigent in their positions.

One approach to address situations where you believe that an improper determination is blocking you from reaching an allowance involves examining the evidence in the record. As an initial matter, if the Office has little to no evidence supporting its interpretation, that alone point alone may be sufficient, and appeals have been won on nothing more.

But if you want a stronger position on appeal, or maybe to avoid even having to go through the appeal, your next step might be to find some evidence that contradicts the Examiner's interpretation. That evidence might be from how terms are used in your own specification, or how terms are used in cited prior art.  Declarations are also an important source of evidence on the record.

But what about using online dictionaries and/or Wikipedia? Often these can be double-edged swords, as one definition may be helpful, but another unhelpful. Consider some recent PTAB decisions. In US 13/905,429, Kimberly Clark was helped by the dictionary definition of "fiber" as sufficient to enable the use of the term "non-web fiber." But, in US 13/100,980, Sony was not helped with the definition of "simulation," in that there was "at least one dictionary" that defined the term in a way to enable the rejection to be maintained. Often the issue turns into a war of definitions from competing sources. In such a case, finding some additional evidence of record to tip the scales is the key, as well as making sure that the proffered definition is entirely consistent with every part of the specification and figures. One misstep here can be fatal as the PTAB loves to find a use by the Appellant that is broader than the desired construction to enable an affirmance under the BRI.

So, when arguing the broadest reasonable interpretation of a claim term to the Office, make sure you have evidence on your side, and that your proposed interpretation is consistent with the evidence and most importantly consistent with your specification.