When drafting an application, one does not only have to make sure to describe all of the relevant details, at various levels of abstraction, but one must constantly review every aspect of the language with an eye toward how it can be manipulated to be misconstrued - sometimes to mean the opposite of what was intended. This might seem maddening to inventors, who almost never read an application with such a viewpoint (as they are reading to make sure that their invention is properly described). But due to the penchant of some USPTO examiners for purposely misconstruing terms in order to enable rejections, applicants need to acknowledge the imprecision of language. Further, the Federal Circuit often condones very broad USPTO interpretations and so this issue is here to stay.

An example to illustrate the push and pull around interpretation is the term integral. Many patent applications use the term and there are numerous PTAB decisions addressing it, not all coming to the same conclusion on its meaning. Sometimes it is broad enough to cover parts that are welded together yet not so broad as to cover components held together only by a frictional force. Most of the time the claim is not interpreted by the PTAB so broad as to cover any interconnection.

Examiner’s often cite to a dictionary definition of integral to mean a part of the whole, or something similar. Yet, such a broad interpretation sometimes reads the limitation right out of the claim. Like many interpretation issues, the correct answer is often dependent on the particular facts of the case. One recent PTAB decision discussed below illustrates that when the Examiner cites a dictionary definition to support their interpretation, and the Applicant does not rebut or otherwise point to any evidence in the record to dispute that interpretation, the Examiner’s overly-broad interpretation can lead to affirmance.

Specifically, in 14/262,726, the preamble of claim 1 recites “an integral plastic ball valve” comprising multiple components. The applicant argued that the prior art was deficient because the “entirety of the ball valve” of the prior art was not an integral plastic structure because such structure would render it unsatisfactory for its intended purpose.” The Examiner’s rejection relied on the term “integral” being defined “as ‘relating to, or belonging as part of the whole,’” and as such maintained the position that the ball valve of the prior art qualified as “integral.”

The PTAB noted that the Applicant provided no other evidence or reasoning as to why the examiner’s interpretation was incorrect, and cited to Advanced Cardiovascular Sys. as supporting the examiner’s interpretation. Thus, the rejection was affirmed.

So, be careful to address overly-broad examiner interpretations, such as through alternative dictionary definitions as well as citing to evidence in the record, including the specification, as to an interpretation that is consistent with the intended meaning. Failure to address the interpretation head-on can result in the PTAB accepting the examiner’s dictionary citation without further analysis.