In re Smith, International, Inc., Appeal no. 2016-2303 (Fed. Cir., Sept. 16, 2017)(”Smith”), the Fed. Cir. reversed the PTAB (that had affirmed the Examiner’s rejection of the claims) on the basis that the Board had subjected an element in Smith’s claims to an oil drilling tool to the broadest “possible” interpretation, rather than to the broadest reasonable interpretation. The element was “the body” of the claimed expandable downhole tool, that also comprised “at least one non-pivotable, moveable arm…having angled surfaces that engage said body….”

Don’t ask me to explain how this or the prior art device works, and the complex, cross sectional figures that are included don’t help, but the Examiner reasoned that, since only the term “body” is recited in the claims without further limiting features, such as a “mandrel” and a “cam sleeve” that were in the prior art device, “body” should be interpreted as a “broad term that may encompass other [unnamed] components….” The Board upheld the rejection, even while conceding that the specification describes the body as a discrete element separate from the other elements, because “the specification does not ‘define’ the term ‘body’ or ‘preclude the Examiner’s interpretation.” The Board went on to define the term “body”, not as the tool’s outer housing, but as “the overall portion….of the downhole tool that defines the bore and may include one or more other elements” e.g., as found in the prior art.

As noted above, this interpretation was rejected by the panel as improperly giving the claim term its broadest possible interpretation: “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification…is an interpretation that corresponds to what and how the inventor described his invention in the specification, i.e., an interpretation that is ‘consistent with the specification’…we therefore conclude that the ‘body’ in the [Smith patent] claims is a component distinct from other separately identified components of the specification, such as the mandrel, and cannot be understood to include the ‘cam sleeve’ in [the prior art device].”

Although this is clearly a “pro-patent” outcome, there has been some debate among commentators as to how this standard will be applied by Examiners and the PTAB. While this decision is instructive about claim interpretation, it seems to be moving the standard for BRI closer to a Phillips-type analysis: “[BRI] does not include giving claims a legally incorrect interpretation ‘divorced from the specification and the record evidence.’” Record evidence, like the prosecution history, perhaps?

This article was originally published on Patents4Life.com.

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