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!