In re: Nordt Development Co., LLC

Docket Nos. 2017-1445

February 8, 2018

Brief summary: PTAB decision based on construction of “injection molded” as a product-by-process limitation vacated and remanded as “the structural nature of ‘injection molded’ can be gleaned from the plain claim language and the specification itself”.

Summary: Nordt appealed PTAB decision affirming an examiner’s rejection of claims 1 and 14 of U.S. Ser. No. 13/241,865 relating to a knee brace for anticipation. Representative claim 1 requires “a hinge mechanism comprising an injection molded strut component”, “injection molded first and second arm components”, and “an elastically stretchable framework injection molded around the strut and arm components”. The PTAB’s anticipation determination was based on its “claim construction of ‘injection molded’ as a process limitation with no patentable weight”. The ‘865 specification states that, e.g., “[t]he supports” and “embodiments…preferably are manufactured in injection molding processes”. Nordt addressed a prior art rejection by by “further limiting the recited ‘strut’ and ‘arm’ components with the phrase ‘injection molded’” and arguing “that ‘injection molded’ conveys ‘a clear structural limitation’”. The examiner maintained the rejection because “[i]n order to anticipate the injection molded feature, the prior art must disclose the finished product and not the method of making the product.” The PTAB affirmed the examiner’s rejection “after finding that ‘Appellants do not persuasively explain what structural limitation is imparted by this manufacturing practice.’” The FC panel explained that it reviewed the PTAB’s decision de novo as it was only based on intrinsic evidence (Teva, FC 2015). The FC panel also explained “that, when considering the patentability of product claims that contain process limitations, claim scope is generally based on the product itself, not the process” (In re Thorpe, FC 1985) but also that “[i]f the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered” (In re Garnero, CCPA 1969 (PTO error “in presuming the limitation ‘interbonded one to another by interfusion’ to be a process, rather than structural, limitation…as capable as being a structural limitation as ‘intermixed’, ‘ground in place,’ ‘press fitted,’ ‘etched,’, and ‘welded,’ all of which at one time or another have been separately held capable of construction as structural, rather than process, limitations”)). The FC panel found that “the Board confounded two somewhat distinct inquiries-the first being whether ‘injection molded’ is a process or structural limitation, the second being the precise meaning of the limitation in structural” (3M Innovative, FC 2003 (“words…that can connote” structure or process are “by default interpreted in their structural sense”; “‘superimposed’…not a process”); Hazani, FC 1997 (“‘chemically engraved’ not a process term”; Vanguard, FC 2000 (“‘integral’ describes a structural requirement”); SmithKline, FC 2006 (“‘molded plastic’…connotes structure”)). And the FC panel concluded that “the structural nature of ‘injection molded’ can be gleaned from the plain claim language and the specification itself”, and vacated and remanded the PTAB decision as based on an incorrect claim construction.

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