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Monday, April 19, 2004

The Written Description & Claims

We touched on this in the review session, but I'm still not clear on the relationship between the written description and claims.

Combining the holdings from the Gentry case, the Renishaw case (on page 217 and 221), and Johnson Worldwide, is it correct to say that a limitation may not be read into a claim from the written description, unless there is a term in the claim needing clarification?

So to modify the Segway example from the practice test, if there was a drawing and written description of a 4-wheeled vehicle, this might be limiting if the claim said something vague like "having some wheels," but would not be limiting if the claim more specifically read "having 2 or more wheels." Right?

Posted by Allison Sheedy on April 19, 2004 at 03:37 PM in Questions | Permalink

Comments

I'd put the rule more directly: the ordinary meaning of claim terms will not be altered without a good reason to do so. See, e.g. Johnson Worldwide. One reason to alter the ordinary meaning (e.g., look to the specification for inferences, etc.) would be that the claim is fatally unclear when using the ordinary meaning. Note that I doubt that your first example above is sufficiently unclear to justify altering the ordinary meaning of "some" (i.e, one or more).

The phrasing from the cases you noted above is correct as far as it goes, but it doesn't tell you much about the analytical process by which you are supposed to operate. You must always be 'defining' an an actual claim term.

Posted by: Polk Wagner at Apr 19, 2004 4:05:17 PM

Not sure it this will help, but keep in mind that claim construction is done during an infringment analysis, where an accused device has challenged the meaning of a term in the claim. To modify your example, if the claim included "two or more rolling means" and the accused device has five swiveling castors (like on an office chair), the court must now figure out if "rolling means" encompasses only "wheels" or if it also covers "castors". I think this is pretty similiar to Johnson Worldwide, where the question was if "coupled" was restricted to "mechanically connected" or could also include "electrically wired".

Posted by: Larry Zelson at Apr 19, 2004 5:44:48 PM