Board of Patent Appeals Issues Key Claim Construction Decision

MARK TERRY, ESQ.

In Ex parte Tosey, the Board upheld a rejection under 35 U.S.C. § 102(e) because the applicant’s claim was drafted too broadly.

The claim concerned initiating a coupling between a wireless digital device and an “interconnected network.” The applicant argued that an interconnected network differed from the wireless network disclosed in the prior art, but the claim itself did not require the distinction being asserted.

The Board explained that the claim merely required receiving data from an interconnected network and did not exclude a cellular network. Under the broadest reasonable interpretation, the Board would not read a wired-and-wireless limitation into the claim from the specification.

Lessons learned: Important distinctions must appear in the claims. In crowded technical fields, applicants should expressly recite the structural or operational features that separate the invention from existing patents rather than relying on unstated implications.