Broadest Reasonable Interpretation Standard at PTO
In the PTO during examination, examiners will sometimes cite the broadest reasonable interpretation (BRI) standard from the MPEP when making an extreme interpretation of a claim limitation. For example, I have had examiners tell me that under BRI a pixel discloses a resistor limitation, or that a flat shape discloses protruding limitation.
However, what the examiners often omit from this portion of the MPEP is that the BRI must be consistent with the specification. This point has been emphasized by the Federal Circuit in, for example, Phillips v. AWH Corp, where it was stated that the PTO determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” This point was further followed in the non-precedential case of In re JOSEPH GIUFFRIDA by the Federal Circuit in 2013 in which the court criticized the Board of Patent Appeals for using the dictionary definition of portable as can be carried rather than the definition provided in the specification of capable of being transported relatively easily.
Unfortunately, as illustrated by In re Giuffrida, the patent office seems to support the examiners when they make these extreme interpretations of claim limitations. I have come to suspect that this may even be an examination strategy used by examiners to obtain an easy case disposal and improve their production efficiency. Particularly, the examiner makes a first non-final rejection in which the claims are rejected over a clearly different reference based upon an unreasonable claim interpretation (a pixel has resistance so it is a resistor). After the applicant amends the claims to overcome the clearly different reference, the examiner issues a Final Rejection based upon a more reasonable reference since the claims were amended. At this point the applicant has to file an RCE. Even if the applicant argued in response to the non-final OA and final OA that the examiner interpretation was unreasonable because it was not consistent with the specification and appealed, the applicant may very well not win at the Board of Appeals as shown by In re Giuffrida. Further, there will likely be a 2-3 year wait to even get a Board decision. By that time the technology may be obsolete. Therefore, it is best to write claims of varying scope in which the definition of the terms are narrowed in subsequent dependent claims.
Summary – The Broadest Reasonable Interpretation must be consistent with the specification. The terms used in claims should be further clarified in dependent claims to avoid the common examiner gaming strategy of taking advantage of BRI to get an easy disposal.