New Terminology

I.

THE MEANING OF EVERY TERM SHOULD BE APPARENT

The meaning of every term used in a claim should be apparent from

the prior art or from the specification and drawings at the time the application

is filed. Claim language may not be “ambiguous, vague, incoherent, opaque, or

otherwise unclear in describing and defining the claimed invention.”

In

re Packard,

751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir.

2014). Applicants need not confine themselves to the terminology used in the prior

art, but are required to make clear and precise the terms that are used to define

the invention whereby the metes and bounds of the claimed invention can be

ascertained. During patent examination, the pending claims must be given the

broadest reasonable interpretation consistent with the specification.

In

re Morris,

127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.

1997);

In re Prater,

415 F.2d 1393, 162 USPQ 541 (CCPA 1969).

See also

MPEP §

2111

-

§ 2111.01

. When the specification

states the meaning that a term in the claim is intended to have, the claim is

examined using that meaning, in order to achieve a complete exploration of the

applicant’s invention and its relation to the prior art.

In re

Zletz,

893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).

II.

THE REQUIREMENT FOR CLARITY AND PRECISION MUST BE BALANCED WITH THE

LIMITATIONS OF THE LANGUAGE

Courts have recognized that it is not only permissible, but often

desirable, to use new terms that are frequently more precise in describing and

defining the new invention.

In re

Fisher,

427 F.2d 833, 166 USPQ 18 (CCPA 1970). Although it is

difficult to compare the claimed invention with the prior art when new terms are

used that do not appear in the prior art, this does not make the new terms

indefinite.

New terms are often used when a new technology is in its infancy

or is rapidly evolving. The requirements for clarity and precision must be

balanced with the limitations of the language and the science

18 (CCPA 1970). Although it is

difficult to compare the claimed invention with the prior art when new terms are

used that do not appear in the prior art, this does not make the new terms

indefinite.

New terms are often used when a new technology is in its infancy

or is rapidly evolving. The requirements for clarity and precision must be

balanced with the limitations of the language and the science. If the claims, read

in light of the specification, reasonably apprise those skilled in the art both of

the utilization and scope of the invention, and if the language is as precise as

the subject matter permits, the statute (

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph) demands no more.

Packard,

751 F.3d at 1313, 110

USPQ2d at 1789 ("[H]ow much clarity is required necessarily invokes some standard

of reasonable precision in the use of language in the context of the

circumstances."). This does not mean that the examiner must accept the best effort

of applicant. If the language is not considered as precise as the subject matter

permits, the examiner should provide reasons to support the conclusion of

indefiniteness and is encouraged to suggest alternatives that would not be subject

to rejection.

III.

TERMS USED CONTRARY TO THEIR ORDINARY MEANING MUST BE CLEARLY REDEFINED IN

THE WRITTEN DESCRIPTION

Consistent with the well-established axiom in patent law that a

patentee or applicant is free to be his or her own lexicographer, a patentee or

applicant may use terms in a manner contrary to or inconsistent with one or more

of their ordinary meanings if the written description clearly redefines the terms.

See, e.g.,

Process Control Corp. v. HydReclaim Corp.,

190 F.3d

1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir

th the well-established axiom in patent law that a

patentee or applicant is free to be his or her own lexicographer, a patentee or

applicant may use terms in a manner contrary to or inconsistent with one or more

of their ordinary meanings if the written description clearly redefines the terms.

See, e.g.,

Process Control Corp. v. HydReclaim Corp.,

190 F.3d

1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999) (“While we have held many times

that a patentee can act as his own lexicographer to specifically define terms of a

claim contrary to their ordinary meaning,” in such a situation the written

description must clearly redefine a claim term “so as to put a reasonable

competitor or one reasonably skilled in the art on notice that the patentee

intended to so redefine that claim term.”);

Hormone Research Foundation

Inc.

v.

Genentech Inc.,

904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990).

Accordingly, when there is more than one meaning for a term, it is incumbent upon

applicant to make clear which meaning is being relied upon to claim the invention.

Until the meaning of a term or phrase used in a claim is clear, a rejection under

35

U.S.C. 112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph is appropriate. It is appropriate to compare the meaning of terms given

in technical dictionaries in order to ascertain the accepted meaning of a term in

the art.

In re Barr,

444 F.2d 588, 170 USPQ 330 (CCPA 1971).

See also

MPEP

§ 2111.01

.