Claim construction is one of those issues that really makes prosecutors nervous. It’s a difficult area of law replete with inconsistencies that keep us guessing as to the current “best practice” for crafting patent applications.
Here’s one to add to the list. This week, in two separate cases, the Court of Appeals for the Federal Circuit pointed to the Abstract section of a patent as supportive of a narrow claim construction. That’s right – the Abstract – the section that is intended to “enable the…Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.” (37 C.F.R. 1.72(b))
In iLOR v. Google (read the PTP review here), the Court noted that the Abstract said exactly what the proposed narrow limitation required: “[w]hen the cursor has remained near the hyperlink for a predetermined time period, a toolbar is displayed….”
Same thing in Netcraft v. eBay (read the PTP review here), where the Abstract plainly stated that “[t]he provider creates access to the Internet for the customer” (there the issue was whether the disputed term required the provision of internet access). The court even rejected the argument that the Abstract was actually a holdover from the parent application, noting that “the common specification, including the Abstract, consistenly describes the invention in terms of a third party providing internet access to customers.”
Use of the Abstract to support a narrow interpretation of the claims is not new, of course, and it’s important to note that the court did not rely solely on the Abstract in either of these cases. Nevertheless, they should serve as a reminder that the potential for such use is alive and well. Prosecutors should take the opportunity to remind themselves to draft their Abstracts with three things in mind:
- the requirements for the Abstract (150 words),
- the purpose of the Abstract (to enable a quick determination of the nature and gist of the technical disclosure (not “the invention“), and
- the potential impact of the Abstract on the claims.
Happy drafting!
Tags: abstract, prosecution
I have a philosophical difference. From the point of view of a patent attorney, the sole purpose of a patent is to create value for the client, and the sole concern in an abstract is to avoid tarnishing that value. Thus bullet 3 is the beginning and end of the analysis. Bullet 2 absolutely must NOT be a “purpose” of the abstract kept in mind when the abstract is drafted.
Now it turns out that bullets 2 and 3 are largely congruent – if the abstract focuses on the claims, it will by definition guide a search by focusing on the key technical disclosure. But that’s an accidental outcome, not a goal for the attorney.
David -
Thanks for the comment.
I disagree – There are two concerns with the Abstract – meeting the requirements of the rules and regulations, and avoiding any potential limit on claim scope. I think that keeping bullet 2 in mind – which is taken directly from the regulations – when drafting the Abstract reminds the writer that the requirements focus on “the disclosure,” and not on “the invention.” Remembering this distinction should help to avoid the introduction of any emphasis on “the invention,” which is a frequent source of trouble in claim construction analyses.
Thanks again for the comment.