February 8, 2018

Process Limitations are Presumed to Impart Structural Limitations, Even Where it is not Clear What those Limitations Are

By Bryan K. Wheelock, Principal

In In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018), the Federal Circuit rejected the Board’s claim construction of “injection molded” as a process limitation with no patentable weight, vacated the Board’s finding of anticipation, and remanded.

The application was directed to an elastic knee brace.  The claims required “an injection molded strut component and injection molded first and second arm components” and “an elastically stretchable framework injection molded about the strut and arm components of the hinge mechanism.”  The Examiner rejected the claims as anticipated, which the Board affirmed after finding that the applicant did not persuasively explain what structural limitation is imparted by “injection molded.”

The Federal Circuit said that when considering the patentability of product claims that contain process limitations, claim scope is generally based on the product itself, not the process.  The Federal Circuit noted that if the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered.

Nordt argued that the Board erred in presuming that “injection molded” was a product-by-process limitation, and the Federal Circuit agreed, stating that in presuming “injection molded” to be a process limitation, 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 if structural.

As to the first inquiry, the Federal Circuit found that “injection molded” connotes structure.  Although the application describes “injection molded” as a process of manufacture, neither the Board nor the examiner disputed Nordt’s assertion that “there are clear structural differences” between a knee brace made with fabric components and a knee brace made with injection-molded components.  The Federal Circuit examined the specification and concluded that, at a minimum, the specification demonstrates that “injection molded” connotes an integral structure.

The Federal Circuit also noted a default rule where words of limitation that can connote with equal force a structural characteristic of the product or of a process of manufacture are commonly (and by default) interpreted in their structural sense — unless the patentee has demonstrated otherwise.  The Federal Circuit then cited numerous examples where limitations convey structure even when they also describe a process of manufacture.  The Federal Circuit asserted that not only does the specification itself convey a structural meaning to “injection molded,” but the applicant has repeatedly represented that it does.

Acknowledging that Nordt failed to persuasively or precisely explain what structural limitation is imparted by “injection molded,” the Federal Circuit nonetheless said that the failure to identify that structure does not affect the conclusion as the structural nature of “injection molded” can be gleaned from the plain claim language and the specification itself.

The Federal Circuit remanded so that the Board could construe the “injection molded” limitation, noting that the specification supports an interpretation that requires an integral structure, and saying it is up to the Board to determine whether this claim language requires any additional structure.