Judge Rich’s famous (at least to patent practitioners) quote rings true every day in patent preparation and prosecution - the claim is the name of the game. As discussed in some past posts (here), when you find yourself making arguments about the prior art missing a feature, yet that feature does not match up neatly with the claim language, it is time to reflect.

Sometimes this occurs because you are trying to link up various aspects explicitly in the claim but that happen to be positioned far away from each other due to antecedent basis issues or because of multiple amendments. Sometimes the issue is that the amendment you really want to make is not explicitly or clearly supported by the specification, so you are stuck with sub-optimal wording. Whatever the reason, danger lies ahead as we see in a recent appeal from Medtronic (15/592,343).

Claim 1 on appeal recites:

1. A method of use of an isolated heart-lung preparation comprising:

obtaining an excised heart with one or two lung(s) including corresponding coronary arteries and veins;

delivering a transparent perfusate through several and/or all four chambers of the heart via a cannulated attached aorta,inferior vena cava, pulmonary artery and pulmonary vein;wherein the perfusate flows through the coronary arteries and veins of the heart and oxygenates the heart with trachea being intubated and

employing a ventilator to inflate/deflate the lung with
carbogen or other gaseous mixtures.

Medtronic’s main arguments were around the idea that the examined failed to establish in the cited art that perfusate could be oxygenated in the lung, or that the cited art’s teaching of oxygenating blood using the lungs does not constitute teaching oxygenating clear perfusate using the lungs. However, the PTAB pointed out that neither of these exact phrases is in the claim.

Such “arguments fail from the outset because . . . they are not based on limitations appearing in the claims.” In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

So what are some practical tips to avoid falling into this trap that even sophisticated applicants have trouble avoiding?

• Bounce your arguments off a colleague - point to the claim limitation you are arguing and explain your arguments in your own words. If they have trouble following how you have linked the argument directly to the claim language, so too may the USPTO.

• Conduct an interview and see how the examiner responds directly to your arguments - again, if they point out that the claim language doesn’t match your argument, then there is an opportunity to work collaboratively on claim amendments.

• When drafting an application, you hope you are prescient enough to add language needed to avoid new prior art the examiner finds, but no drafting is ever perfect. One aspect to consider when drafting is approaching the detailed description from different points of view or with different descriptive language so that various options are available during prosecution. However, one must be careful to properly understand the different scope such descriptions provide and avoid equating different scoped aspects to one another.

• If you are arguing about a combination of elements that are positionally “far” away from each other in the claim, consider re-formatting the elements so that they are closer together or even in a common phrase. This not only helps streamline the language in the arguments, but makes it easier for a reader to follow the argument.

What other ideas do you have?