Every patent professional knows the famous adage that the name of the game is the claim. While some cite to case law (In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)), that case cites the true source as being the great Judge Rich (Giles Sutherland Rich, Extent of Protection and Interpretation of Claims-American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990) (“The U.S. is strictly an examination country and the main purpose of the examination, to which every application is subjected, is to try to make sure that what each claim defines is patentable. To coin a phrase, the name of the game is the claim.”)).

Almost any argument about patentability or infringement comes down to the words in the claim. Yet, it happens often that arguments made by applicants and/or patent examiners can stray too far from the actual words in the claim. While it is true that the claims must be interpreted in light of the specification and as would be understood by one skilled in the art, one must not improperly import limitations from the specification into the claim and of course one must be cognizant that during prosecution, claims are given the broadest reasonable interpretation by the USPTO.

Even sophisticated applicants dealing with complex technology can stray from the actual claim language. A recent example related to turbine engines and additive manufacturing (Appeal 2020-000198, Application 14/671,593) is illustrative.

The case involves a method for fabricating a component that may be used, e.g., as a turbine component. Claim 1 on appeal provides (with emphasis added):

1. A method for fabricating a component, comprising the steps of:
providing an initial distributed layer of a metallic powder to a high temperature base material, wherein the high temperature base material is non-weldable;
heating the metallic powder to a temperature sufficient to join at least a portion of the metallic powder to the high temperature base material to form an initial layer;
sequentially forming an additional layer over the initial layer by heating an additional distributed layer of the metallic powder to a temperature sufficient to join at least a portion of the additional distributed layer of the metallic powder and join the formed additional layer to underlying layers;
repeating the step of sequentially forming the additional layer over underlying layers to form a formed portion of the component, thereby additively manufacturing the formed portion of the component; and
removing both the formed portion of the component and a first portion of the high temperature base material from a second portion of the high temperature base material; wherein the component is formed of the formed portion and the first portion of the high temperature base material.

One of the issues on appeal was that the cited art disclosed a material addition process including coupling a plate to a gas turbine engine component and adding material to the plate by direct laser deposition. In one embodiment, the process involves removing a damaged portion (e.g., a cracked portion) from a component 58 and depositing material on a backer plate 62 by building up a number of layers 64 to replace the removed portion.

The applicant argued that such disclosure was insufficient because the claims required that the number of deposited layers must be sufficient in number to additively manufacture the formed portion, not just any number of deposited layers. However, the PTAB disagreed and found that the applicant’s argument did not match up to the claim language. Specifically, the PTAB found that there was no showing that the claims were so limited, nor did the specification provide a specific definition of a claim term that would result in the limited interpretation.

Sometimes patent prosecution arguments go down a path (either due to unreasonable assertions by the examiner or due to various other reasons) that loses sight of the relevant facts that will drive a decision on appeal. It is prudent to ensure that, whether advancing an argument to rebut an examiner’s assertion or to establish non-obviousness, the applicant always keep a sharp focus on the actual claim wording and not what they wish the claim wording was. The applicant has the ability to amend claims during prosecution and it is prudent to ensure the claims actually have the desired limitations before heading to appeal.