In many instances, using a particular process results in an innovative consumer product. It only makes sense that patent claims covering these innovative products may use terms or phrases related to the process (e.g., intermixed, ground in place, press fitted, etched, welded, etc.). Yet patent applicants sometimes face difficulty in obtaining patent protection for these types of claims when the examiner classifies the term or phrase as a product-by-process limitation and gives it no patentable weight. The Federal Circuit recently addressed this issue in In re Nordt[1] and reiterated that when such a term connotes structure, the examiner must give it weight—even if it relates to a process.

Nordt Development Co., LLC filed an application[2] directed to an elastic knee brace having a framework and a hinge that included a strut and arm components.[3] During prosecution, the examiner rejected pending claim 1 as anticipated by U.S. Patent No. 6,238,360 to Gildersleeve et al., finding that Gildersleeve taught the claimed framework, strut, and arm components.[4] In response, Nordt amended the claim by limiting the strut and arm components with the term “injection molded” and adding a limitation that recites “an elastically stretchable framework injection molded about the strut and arm components of the hinge mechanism.”[5] Nordt also “argued that ‘injection molded’ conveys ‘a clear structural limitation.’”[6]

Although the examiner acknowledged that Gildersleeve did not disclose the claimed components as injection molded, the examiner gave this term no patentable weight because it described a process rather than an apparatus.[7] Thus, the examiner maintained the rejection, reasoning that, for anticipation, “the prior art must disclose the finished product and not the method of making the product.”[8] Nordt appealed to the Patent Trial and Appeal Board, but the Board affirmed the examiner’s rejection because “Appellants do not persuasively explain what structural limitation is imparted by this manufacturing practice.”[9]

On further appeal, the Federal Circuit disagreed with the Board’s “claim construction of the term ‘injection molded’ as a process limitation with no patentable weight.”[10] The court noted that “claim scope is generally based on the product itself, not the process,”[11] but that “structure should be considered” for a process limitation that “connotes specific structure and may be considered a structural limitation.”[12] In this instance, the Board had “presumed ‘injection molded’ to be a process limitation in a product-by-process claim, then required Nordt to rebut its presumption by explaining the specific structural limitation provided by ‘injection molded.’”[13] In doing so, the Federal Circuit explained that “the Board confounded two somewhat distinct inquiries”: (1) “whether ‘injection molded’ is a process or structural limitation”; and (2) “the precise meaning of the limitation if structural.”[14]

Turning to the first inquiry, the Federal Circuit found that “at a minimum, the specification demonstrates that ‘injection molded’ connotes an integral structure,” even though the application described this term as a process of manufacture.[15] In addition, the Federal Circuit noted that Nordt “has repeatedly represented that” “injection molded” conveys a structural meaning, even though Nordt “failed to persuasively or precisely explain” what that meaning was.[16] In light of the specification’s teachings, the Federal Circuit interpreted the term “injection molded” as a structural limitation because “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.”[17]

Accordingly, the Federal Circuit vacated the rejection as based on an incorrect claim construction and remanded the case to the Board to fully construe the “injected molded” limitation, and particularly determine whether the claim language required additional structure beyond being integral.[18] The Board has not yet acted on the Federal Circuit’s remand. But since the Nordt decision in February 2018, the Board has relied on the Nordt decision at least twice in reversing an examiner’s rejection based on giving no patentable weight to an alleged product-by-process limitation.[19]

Thus, Nordt can be an important reminder for patent applicants. As Nordt suggests, arguing that a term connotes structure may be enough to give the term patentable weight where the structural nature “can be gleaned from the plain claim language and the specification itself.”[20] In addition to simply relying on Nordt, patent applicants should use the specification to show that the term connotes structure. In particular, describing the actual structural differences between the product that results from the process and other products will bolster an applicant’s argument that a term connotes structure (and, if appropriate, could be amended into the claim or included in an alternative claim). Although not a change in the law, Nordt gives applicants a strong footing for relying on process-related terms that connote structure to distinguish a claim over prior art.

[1] In re Nordt Development Co., LLC, 881 F.3d 1371 (Fed. Cir. 2018).
[2] U.S. Application No. 13/241,865.
[3] Nordt, 881 F.3d at 1372.
[4] Id. at 1373–74.
[5] Id. at 1374.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id. at 1372.
[11] Id. at 1375 (citing In re Thorpe, 777 F.2d 695,697 (Fed. Cir. 1985)).
[12] Nordt, 881 F.3d at 1375 (citing In re Garnero, 412 F.2d 276, 279 (C.C.P.A. 1969)).
[13] Nordt, 881 F.3d at 1375.
[14] Id.
[15] Id.
[16] Nordt, 881 F.3d at 1376.
[17] Id. at 1375–76 (quoting 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371–72 (Fed. Cir. 2003)).
[18] Id.
[19] Ex parte Sanghera, No. 2017-007436 (P.T.A.B. Mar. 26, 2018); Ex parte Inoue, No. 2017-006091 (P.T.A.B. Mar. 21, 2018).
[20] Nordt, 881 F.3d at 1376.

This article appeared in the April 2018 issue of The Goods on IP® Newsletter.