MPEP § 2111 and the Broadest Reasonable Interpretation
Sometimes, an Office Action will put forth the conclusory assertion that a certain claim feature has been given the broadest reasonable interpretation as being
equivalent to some term without providing evidence that this is the case. However, the “broadest reasonable interpretation” alone is not the standard that must be
applied. Rather, the broadest reasonable interpretation must be in light of the specification as it would be interpreted by one of ordinary skill in the art. Where the
Examiner has not provided reasoning for the alleged broadest reasonable interpretation and Applicant does not believe that the interpretation meets the above
standard, it may be beneficial to traverse the rejection as follows.
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On page X, the Office Action alleged that because the Examiner is to give the claims their broadest reasonable interpretation, [CLAIMED FEATURE] can allegedly be
interpreted as [ASSERTED EQUIVALENT]. However, this interpretation is not compatible with the present specification and, therefore, is a misapplication of MPEP §
2111.
The underlying meaning of the word [FEATURE] as recited in the claims cannot be dismissed. While the Office Action stated that the claims must be given the broadest
reasonable interpretation, this is not the complete standard. As required by MPEP § 2111, the claims must be given their broadest reasonable interpretation
consistent with the specification. The Federal Circuit elaborated on this standard by requiring that the broadest reasonable
interpretation must be “in light of the specification as it would be interpreted by one of ordinary skill in the art” per In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (emphasis added). In the present case, in some embodiments, the claimed term [FEATURE] is discussed in the present
specification as [SUPPORT].
On the other hand, the Office Action alleged that the broadest reasonable interpretation of [FEATURE] is [ASSERTED EQUIVALENT], without providing support. In fact,
the record is devoid of any evidence supporting the Office Action’s conclusion as to why a person of ordinary skill in the art would allegedly construe [ASSERTED
EQUIVALENT] as [FEATURE]. If the Examiner elects to maintain the position that an [ASSERTED EQUIVALENT] can be a [FEATURE], Applicant respectfully requests that the
Examiner provide documentary evidence on the record supporting this position. Otherwise, Applicant respectfully asserts that the conclusory assertion presented in
support of this rejection is insufficient to maintain the rejection.
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.