During patent prosecution, claim terms are typically given their ordinary and customary meaning, or plain meaning, unless otherwise set forth in the
specification. Where a particular area of art lacks a special meaning for a claim term, the ordinary English meaning can be used. For instance, in the Chef
America case, since the claim stated “heating the resulting batter-coated dough to a temperature in the range of about 400ºF to 850ºF,” and no special meaning for
heating dough was found in the art, the Court of Appeals for the Federal Circuit (CAFC) held that the claim required heating of the dough (instead of the air inside
the oven) to this temperature range (see Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004)).
However, Examiners sometimes cite art that uses the same term, but the cited term refers to a different thing than what a person of ordinary skill in the art would
generally understand by the claim term. For instance, if a processor is readily understood to be a CPU of a computer in a certain art, it would be improper for the
Examiner to cite a food processor against the feature. While this example is a little extreme, rejections that do not apply analogous features may occur since
Examiners sometimes conduct term-based searches without fully investigating the meaning of the term. Where such a rejection occurs, it may be appropriate to traverse
the rejection as follows.
On page [PAGE NUMBER], the Office Action alleged that the term [CLAIM TERM] is equivalent to the [ASSERTED FEATURE] discussed in [CITED ART DOCUMENT]. However,
Applicant respectfully submits that the [ASSERTED FEATURE] in [CITED ART DOCUMENT] is inconsistent with the plain meaning of the claimed term [CLAIM TERM].
The plain meaning of a claim term is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” (see
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). Phillips also indicated that evidence for the ordinary and customary meaning of a term may
be derived from “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art” (see Id. at 1314). In the present case, [EVIDENCE FOR PLAIN MEANING OF THE TERM AS WOULD
BE UNDERSTOOD BY ONE OF ORDINARY SKILL IN THE ART].
The meaning of the word [CLAIM TERM] recited in the claims cannot simply be dismissed. Per the above, the plain meaning of [CLAIM TERM] to one of ordinary skill in the
art clearly means [MEANING]. However, [CITED ART DOCUMENT] discusses [ASSERTED FEATURE] in the context of [CONTEXT]. Accordingly, the plain meaning of [CLAIM TERM]
differs significantly from the [ASSERTED FEATURE] used in [CITED ART DOCUMENT].
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.
Arguments that a claim term has a special meaning in the art may potentially narrow the scope of interpretation to that meaning during litigation. It is important for
counsel to carefully consider whether the meaning to be argued is broad enough to capture any envisioned potential infringers. The meaning given to the claim term
during prosecution is likely to be assigned to the term during a Markman hearing early in litigation.