Broadest Reasonable Does not Mean Broadest Possible!

The USPTO applies a broadest reasonable claim interpretation (BRI) to patents and patent applications. The abbreviation “BRI” is often used to reference the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111)

Unfortunately, a complete BRI analysis is often mistaken by overemphasis of the “BRI” mantra. That is to say, the proper test is not simply a “broadest reasonable interpretation” of claims in a linguistic sense. Rather, a proper broadest reasonable interpretation of the claims is one that is consistent with the specification of the subject application/patent. While it is true that limitations from a patent specification may not be imported to the claims, the USPTO often times confuses this prohibition with the required contextual consideration of the specification.

In 2010, the CAFC strongly cautioned the USPTO on reading claims independent of a patent specification during patent reexamination in In re Suitco Surface (CAFC 2010). Last week, the agency was reversed again for failing to conform the “reasonableness” determination with the scope of the patent specification.

Last week, in In Re Smith International Inc. (16here) the patent owner and the patent examiner (reexamination) differed as to the proper definition of “body” in the context of a downhole drilling tool.

In affirming the examiner’s rejections, the Board determined that the term “body” is a “generic term such as ‘member’ or ‘element’ that by itself provides no structural specificity.” The Board reasoned that although “the specification describes the body as a discrete element separate from other elements, the specification does not “define[] the term ‘body’” or “preclude the Examiner’s interpretation.”

In reversing the Board’s “specification does not expressly preclude” reasoning, the Court noted:

The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” . . . . .

The Board emphasized that the patentee here did not act as a lexicographer, and that the specification neither defines nor precludes the examiner’s reading of the term “body.” Accordingly, the Board found that nothing in the specification would disallow the examiner’s interpretation, rendering it “reasonable.” However, following such logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise. That is not properly giving the claim term its broadest reasonable interpretation in light of the specification.

(internal citations omitted)

The language quoted above clarifies that not only must a BRI construction be reasonable based on the accompanying specification, but notably, it is not the burden of the applicant/patentee to disprove an unreasonably broad construction with an express specification definition or disclaimer.

Scott A. McKeown is an author of the Patents Post Grant.