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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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BPAI Uses Dictionary Definitions Published Four Years After The Application Filing Date in Construing Claim Terms

Ex parte Courtney (BPAI Jul. 17, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Silverberg, reversed a rejection of claims related to a broadcast spreader having a movable deflector.

In its opinion, the BPAI made two findings of fact related to the "ordinary and customary meaning" of the terms "arcuate" and "profile" for purposes of the claims at issue. The BPAI found that the term "arcuate" meant "having the form of a bow, curved" and the term "profile" meant "a side view of an object or structure." In support of these constructions, the BPAI cited to The American Heritage Dictionary of the English Language (4th ed. 2007).

Interestingly, the claims at issue were filed with the UPSTO on May 22, 2003, and the Federal Circuit has stated that the "ordinary and customary meaning of claim term is the meaning the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (emphasis added). It is curious that the BPAI cited to a dictionary in support of its construction where the publication date of the dictionary was roughly four years after the filing date of the patent application.

Here, the edition of the dictionary was of no consequence, as the relevant definitions of these two terms did not change between 2003 and 2007 (the author has confirmed that the year 2000 edition of the same dictionary contained identical definitions of these two terms). While in this particular case, the definitions of these two common words did not change over four years, there may be situations where definitions could change drastically in the span of four years (or even less), especially in new and rapidly developing technologies. For at least this reason, it is good practice to cite to dictionaries that were published before the filing date of the patent application.

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