If you give a mouse a cookie, he is going to want a glass of milk. And if you have kids you know where this goes. Much like the never-ending consequences of that cookie, so too can it be with claim interpretation. When one needs to “interpret” claim terms (with more words), that inevitably leads to the question of what do those words mean, ad infinitum.
But as patent professionals, that is the world we live in. A recent PTAB case illustrates that even when one defines aspects of a feature in a claim, there can be disputes as to what it means to define a term. Yes, that’s right - we now have to define “define.“
The case is 14/727,235 to LSI Solutions. The claimed subject matter relates to surgical suturing, and more specifically to minimally invasive surgical suturing devices, needles, and methods for suturing tissue and prosthetic devices such as, but not limited to, papillary muscles, aortic roots, and annuloplasty rings. Claim 1 is illustrative of the claimed subject matter and recites:
1. A suturing device for minimally invasive surgery, comprising:
a head defining one or more ferrule holders and a tissue bite area;
a first needle comprising a flywheel portion and one or more curved arms extending from the flywheel portion, each of the one or more curved arms comprising a ferrule engaging tip, wherein the first needle is pivotably coupled to the head;
a first actuator coupled to the first needle and configured to rotate it from a retracted position, where the ferrule engaging tip of each of the one or more curved arms starts away from the one or more ferrule holders, through the tissue bite area, and to an engaged position where the ferrule engaging tip of each of the one or more curved arms is operationally aligned with the one or more ferrule holders.
One of the issues on appeal was whether the cited art showed “a head defining one or more ferrule holders.” The Examiner relied on an interpretation of “head” as “an upper or forward-most part of an object.” From this, the Examiner reasoned that the entire distal portion of the prior art suturing device other than its needle, first actuator, and shaft, qualified as the head consistent with the claims. And, this distal portion included a ferrule holder and so showed the features as claimed (under BRI). LSI pointed out that this interpretation was not reasonable since it ignored the “defining” aspect that was explicit in claim 1, and since the prior art’s alleged “head” did not define the ferrule holders, the rejection was improper.
In its analysis, the PTAB looked to define “defining.” However, while the specification used the term consistent with the figures, the specification, unsurprisingly, did not explicitly define “defining”. So, the PTAB turned to the dictionary (internal citations omitted).
Merriam-Webster’s dictionary defines the term “define” as “to fix or mark the limits of : demarcate rigidly defined property lines.” This definition of the term “define” is consistent with the teachings of the Specification. For the limitation at issue, we thus construe the term “defining” to mean “forming, fixing, or marking the limits of.” Additionally, we construe the phrase “a head defining one or more ferrule holders” to mean “a head forming, fixing, or marking the limits of one or more ferrule holders.”
From here it was easy to reverse the rejection since the distal end portion of the cited suturing catheter did not form, fix, or mark the limits of the element being cited as the ferrule holders.
A proper interpretation often requires looking beyond one term in isolation. Here, the dispute appeared to be about the scope of the term “head” but in the end it was the phrase overall, including the “defining” relationship, that led to the PTAB to their interpretation.