In In re American Academy of Science Tech Center, No. 03-1531 (Fed. Cir. May 13, 2004), the federal circuit affirmed the rejection of several claims of American Academy’s (“AA’s”) ‘989 patent, directed to a method of operating a distributed data processing system.
The ‘989 patent originally issued in 1987 and was directed to a method of operating a distributed data processing system including a plurality of independent, although not necessarily uniform, general purpose user computers to run respective user application programs to process user data and a data center computer to store, retrieve, and update user data. The patent was placed in reexamination in 1994, and the claims were rejected both as anticipated and as obvious in light of cited references describing back-end systems where several mainframe computers interfered with a single database or “back-end” computer. AA argued that the term “user computers” should be construed to mean “single user computers.” AA also argued that the specification limited the construction of “indirectly issuing.” The board disagreed and affirmed the Examiner’s rejection of the claims, noting in part that certain statements in a Declaration filed by AA were merely personal opinions, rather than evidence-based.
Affirming the board, the federal circuit held that a patentee “may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” The federal circuit concluded that merely pointing out the deficiencies with multi-user computers in the prior art was insufficient to disclaim the networking of mainframe to a central computer, and the specification as a whole did not suggest a narrow construction. The federal circuit highlighted the PTO’s use of a different standard for construing claims during prosecution (i.e., broadest reasonable interpretation during examination) than that used by district courts in litigation, based on the ability of an applicant to amend his claims during prosecution.
Finally, the federal circuit reiterated its prohibition against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.
To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (firstname.lastname@example.org), at Sughrue Mion, PLLC in Washington DC., USA.
The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
APLF · PO Box 7418 · Washington, DC · 20044-7418