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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Patent Examiners Not Required to Make On-The-Record Claim Constructions

In re Jung (Fed. Cir. Mar. 28, 2011)

In this case, which was appealing a rejection of claims in a pending patent application, the Federal Circuit stated that patent examiners are not required to make an on-the-record construction of every claim term in every rejected claim.  The patent application at issue related to a photo-detector array system for transforming light inputs into electrical signals.  The claims at issue were rejected by the patent examiner and that rejection was sustained by the BPAI.

On appeal, the applicant argued that the patent examiner had not made a prima facie case of invalidity.  The applicant then argued during oral argument that such a prima facie case requires, among other things, an "[o]n-the-record showing of a reasonable, broadest reasonable construction."

The Federal Circuit responded in its opinion, stating that "[t]here has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection.  This court declines to create such a burdensome and unnecessary requirement."