When drafting a patent application, one approach to differentiate prior art may include precision in defining and using terms in the specification. This can become somewhat tricky when prior art intermixes terms that the applicant wishes to distinguish. For example, the inventor may consider two terms as having a subtle distinction that is particularyly relevant to the novelty and non-obviousness of their invention. So when prior art intermingles these terms and perhaps carelessly ignores slight variations in their meanings, the applicant can anticipate difficult rejections when an examiner takes the position that the prior art is evidence that the terms are equivalent.

In such situations, how does the applicant’s ability to act as their own lexicographer stack up against the other evidence of record in determining the proper meaning of terms in the claim?

Consider a recent PTAB decision for one of Anheuser-Busch’s aluminum bottle innovations. The application is titled “Reducing Material Usage and Plastic-Deformation Steps in the Manufacture of Aluminum Containers.”

1. A method of making an aluminum bottle, the method comprising:
obtaining sheet aluminum, the sheet aluminum having a difference between ultimate tensile strength and yield strength between 3.31 thousand pounds per square inch (ksi) and 8.0 ksi;
cutting a blank from the sheet aluminum;
plastically deforming the blank into a cup with three or fewer drawing steps; and
necking the cup to form an aluminum bottle with a neck.

As a reminder, U.S. patent law allows applicants to define terms in their application, provided the definitions are clear, explicit, and consistent. This lexicographic power can be especially valuable in various settings, including in the context of this post. Specifically, the patent specification is not only good evidence of how a term should be interpreted (even under the Broadest Reasonable Interpretation, BRI), but it can super-cede other evidence since it often regarded as the single best source for understanding claim terms. Courts and the USPTO give considerable weight to the intrinsic record—comprising the claims, specification, and prosecution history—over extrinsic evidence such as dictionaries or expert testimony. In this way, well-defined terms in the specification can outweigh inconsistent evidence in the prior art, particularly when clear definitions are provided, distinctions are technically justified, and the language avoids ambiguity.

Turning back to the Anheuser-Busch case (Appeal 2023-003285, Application 17/017,440), the images below show the bottle configuration from the patent application, as well as some examples of various aluminum bottles on the marketplace.

Here, Anheuser-Busch likely anticipated that the closest prior art would be from aluminum cans. As such, they set up the specification to support the distinction between cans and bottles. For example, the specification provided explicit definitions for the “neck”:

The examiner nevertheless cited prior art relating to a can. However, the prior art did reference cans and bottles and thus since there is a slight narrowing in a can, the examiner maintained the rejection despite arguments that the terms were distinct and that the neck required a special meaning from the specification. Specifically, the examiner argued that:

Examiner notes that [the prior art] does not provide any specific dimensions for the can being made from the disclosed aluminum sheet which would preclude it from meeting the requirements of a ‘bottle’ as described in the specification of the instant application, and furthermore notes that in the art of aluminum beverage containers, the terms ‘bottle’ and ‘can’ are often used interchangeably; i.e. although the Appellant clearly distinguishes between the two terms, many others in the art do not.

The PTAB disagreed, noting that “[t]he specification is the ‘single best guide’ to a disputed term’s meaning.” As to the examiner’s arguments, the PTAB provided the following explanation:

In the present case, the Specification provides a special definition of “neck” that disavows shapes outside of a particular height and width. See Spec. ¶ 42. The Specification precisely defines necks as being “narrower than a widest diameter [of the container] by more than 10%” and “account[ing] for more than 15% of the height of the container.” Id. Although Figures 1 and 2 of [the prior art[ provide some support for the Examiner’s finding that the terms cans and bottles may be used interchangeably, this evidence does not outweigh the other evidence, including the Specification and [prior art], which support a finding that cans are cylindrical containers with lids, while bottles have necks, with the necks being narrower than the widest diameter of the container by more than 10% while also being more than 15% of the height of the container.

So, when faced with these issues, the applicant should carefully review how the prior art uses relevant terms and try to identify early where confusion or overlap might occur (or where an examiner looking for a way to find confusion, might do so). Further, the applicant may consider defining terms in the specification that carve out distinctions aligned with the invention’s novelty and inventiveness. In some cases, examples or experimental data that supports the definitions might even be considered. In this way, by anticipating future issues early in the drafting process, the specification can be set up to provide support. But of course, many times it can be very difficult to anticipate all of the evidence an examiner might be able to find, and so sometimes you may just need a cold one… perhaps in an aluminum bottle.