According to a reasonable interpretation as far as possible, the terms of the claim must be given their clear meaning, unless that meaning is incompatible with the specifications. The simple meaning of a term refers to the ordinary and usual meaning given to the term by those who had ordinary expertise in the field at the time of invention. The ordinary and usual meaning of a term can be supported by a variety of sources, including the words of the claims themselves, the specification, the drawings and the prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is achieved when the specification serves as a glossary of claim terms. The presumption that a term takes on its ordinary and usual meaning may be rebutted by the applicant by clearly defining a different definition of the term in the tender specifications. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the USPTO observes the ordinary use of the terms of the claim, taking into account definitions or other “clarifications” in the written description); But c.f. In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004) (“We cautioned against reading limitations in any claim of the preferred embodiment described in the specification, even if it is the only embodiment described, without a clear disclaimer in the specification.”); In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004) (Disputed claims were pulled to a “hairbrush”). The court upheld the chamber`s refusal to import from the specifications a restriction that would apply the term only to scalp hairbrushes. “[T]he court advises the PTO to avoid the temptation to limit the general terms and conditions of claim only on the basis of passages of specifications.”). If the specification provides a clear path to the language of the claim, the scope of the claims is easier to determine and the public disclosure function of the claims is better fulfilled. See MPEP § 2111.01 for a full discussion of the clear meaning of the wording of the claim.
It is highly desirable that applicants remove ambiguities by modifying claims during the processing of the application, rather than trying to resolve ambiguity in subsequent disputes over the granted patent. Halliburton Energy Servs., 514 F.3d at 1255. Thus, in response to an examiner`s rejection on grounds of vagueness, an applicant may remove the ambiguity by amending the claim or by having a convincing statement recorded on the record that a person with expertise in the field in question would not consider the wording of the claim to be unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). For the latter option, in some cases, it may be necessary for the applicant to provide a separate definition (e.g. from a dictionary recognized by art) in order to show how the usually qualified craftsman would have understood the language of the claim at issue. Id. Claims of “use” that do not claim a process, machine, manufacture, or composition of material do not comply with 35 U.S.C.
101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961) (“No new use per se may be claimed because it does not belong to the categories of patentable inventions specified in 35 U.S.C. § 101”). In Ex parteDunki, 153 USPQ 678 (Vol. App. 1967), the board considered that the following claim was an inappropriate definition of a process: “The use of a high-carbon austenitic iron alloy with a proportion of free carbon as a vehicle brake part exposed to exposure to friction by slippage”. In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C.
1966), the District Court held that the following claim was final, but that it was not an appropriate process claim under 35 U.S.C. 101: “The use of a retardant in the body of ephedrine absorbed by polystyrene sulfonic acid.” 134 Groh v Ramirez, 540 UNITED STATES 551 (2004) (a search on the basis of an arrest warrant that did not describe the objects to be seized was “manifestly invalid”; The elements contained in the supporting documents to which the arrest warrant has no referral and which are not attached to the arrest warrant are insufficient); United States v. Grubbs, 547 U.S. 90, 97, 99 (2006) (because the wording of the Fourth Amendment “specifies only two issues that must be `specifically described` in the arrest warrant: “the place where the search is to be carried out” and “the persons or property to be seized.” the Fourth Amendment does not require that the condition for issuing a prospective arrest warrant be set out in the arrest warrant itself. Where an action has been brought by the Agency using the clear meaning of the claim clauses, the applicant may indicate that the term has been given a special definition. Since it is assumed that the terms of the claim have their clear meaning and that the use of special definitions constitutes an exception, the applicant must indicate where the specification as originally filed provides for a clear and deliberate use of a special definition of the concept of claim, which must be treated as having a particular definition. The presence of a trademark or trade name in a claim is not in itself unreasonable under 35 U.S.C. 112(b) or before AIA 35 U.S.C. 112, second paragraph, but the claim must be carefully analyzed to determine how the trademark or name is used in the claim. It is important to recognize that a trademark or trade name is used to identify a source of products, rather than the products themselves.
Therefore, a trademark or trade name does not identify or describe the products associated with the trademark or trade name. See brand and trade name definitions in MPEP § 608.01(v). An applicant may not add or discard a special definition after the filing date of the application. However, an applicant may indicate or explain it in explanatory notes if the specification as filed contains a special definition or a rejection. A claim, while prima facie clear, may also be indefinite if a conflict or inconsistency between the claimed subject matter and the disclosure of the specification renders the scope of the claim uncertain, since inconsistency with the disclosure of the specification or prior art may result in an otherwise unambiguous claim implying an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In reHammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For example, a claim with a limitation of “means of clamping, including a clamping body and the first and second clamping elements, in which the clamping elements are supported by the clamping body” was classified as indefinite, since the terms “first and second clamping elements” and “clamping body” proved to be vague given the specification, which did not show a “clamping element” structure that was “supported by the clamping body”. In re Anderson, 1997 U.S.
App. Lexis 167 (Fed. Cir. January 6, 1997) (unpublished). In Cohn, one claim related to a process for treating an aluminum surface with an alkaline silicate solution and contained an additional restriction that the surface had an “opaque” appearance. The specification, on the other hand, combined the use of an alkaline silicate with an enamelled or porcelain-like surface that differed in its specifications from an opaque surface. Cohn, 438 F.2d to 993. The tribunal noted that no claim can be read independently of the supporting disclosure on which it is based, and concluded that the claim was inconsistent internally and therefore indefinite due to the description, definitions and examples in the specification regarding the appearance of the surface after treatment. If, having regard to the nature and scope of the applicant`s invention, the applicant presents an unreasonable number of repeated and multiplied claims, the net result of which is to confuse rather than clarify, a rejection of an excessive multiplicity on the basis of Article 35 U.S.C. 112(b) or before AIA 35 U.S.C. 112, second paragraph, suit. As the Court noted in In re Chandler, 319 F.2d 211, 225, 138 USPQ 138, 148 (CCPA 1963), “plaintiffs should have reasonable flexibility to indicate their claims based on the number and phraseology used.
The right of applicants to freedom of choice in the choice of phraseology that truly highlights and defines their inventions should not be restricted. However, such room for manoeuvre should not be extended to sanction the degree of repetition and diversity that hides the definition in a labyrinth of confusion. The rule of reason should be practised and applied in each individual case on the basis of the relevant facts and circumstances. See also In re Flint, 411 F.2d 1353, 1357, 162 USPQ 228, 231 (CCPA 1969).
