Clarity of Patent Claim Terms

Posted Sunday, January 22, 2012.

A patent application concludes with one or more patent claims, which are the legal description of the intellectual property the inventor considers as his or her own. Among the functions that patent claims serve is to provide notice to others with similar inventions, so as to inform them of what to do to avoid infringement.

Accordingly, the claims must have a particular scope, which requires that claims use terms with meanings that are clearly understandable. If the claim terms can’t reasonably be understood, then a different inventor would not know whether or not a new invention infringed on the original patent claims. So one measure of patentability for an application being examined is whether the terms used in the claims are precise and clear. In other words, the claim terms must be definite.

When interpreting the claim terms, a patent examiner will look to the specification for the meaning of any given term. See 37 CFR 1.75(d)(1). (“The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.”)

When claim terms in a patent application do not have the precision and clarity needed to permit a reader to understand the bounds of the intellectual property being claimed, the proposed patent claim might be rejected as indefinite by a patent examiner. Just because the claim term is not defined in the specification does not require that the claim term is necessarily indefinite, however. See MPEP 2173.02, Clarity and Precision.

For example, the claim term may have previously been defined in the “teachings of the prior art.” In other words, if the application for a patent is an improvement on an existing technology, then provided the applicant uses the same terminology utilized in prior patents in that technology, the claim term will be construed to have the same meaning as in the previous patents.

If the claim term is not already known in other patents and patent applications in the same art, it still might not be indefinite. If a particular term is a term that one with skill in the art would understand, then the term will take on that meaning. In the case of a patent application for administering and tracking the value of life insurance policies, a patent claim could use the term “surrender value protected investment credits” without further definition in the specification, for example, because one with an average understanding of life insurance administration would know what the term meant without further explanation. See Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372, 69 USPQ2d 1996, 1999-2000 (Fed. Cir. 2004).

Failing all of the above, a claim term without definition in the specification may not have sufficient meaning to satisfy the requirements of 35 U.S.C. §112, the statute which requires patent claims to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Still, an examiner has a fairly high burden to meet in rejecting a claim on the grounds that it is indefinite. “Only when a claim remains insolubly ambiguous without a discernible meaning after all reasonable attempts at construction must a court declare it indefinite.” Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366, 71 USPQ2d 1081, 1089 (Fed. Cir. 2004). “Insolubly ambiguous” suggests that for an examiner to assert a patent claim is indefinite, not a single meaning could plausibly be attributed to a claim term.

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