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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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Federal Circuit Affirms BPAI's Broadest Reasonable Construction

In re Pond (Fed. Cir. Jan. 18, 2012) (nonprecedential)

In this case, the Federal Circuit affirmed the BPAI's decision rejecting all claims of a patent application related to a dental irrigation tip that can be used to deliver fluids to a dental site.

The claims required that the dental irrigation tip be "unitary [and] one piece".  During prosecution, the Examiner rejected the claims as anticipated by a reference that the applicant argued did not disclose the unitary, one-piece construction required by the independent claims of the application and instead disclosed a two-piece tip.  The Examiner noted during prosecution that the reference formed a dental tip with the same process claimed in the patent application and the two pieces disclosed in the reference were ultimately fixed together as one piece.  The applicant argued that "[u]nitary means a single, whole section."  The BPAI found that "the process of insert molding of two materials having similar properties results in bonding of the two parts such that the end product is of a unitary, one-piece construction."

On appeal, the Federal Circuit determined that "[t]he specification for the '914 application does not contain an express definition of 'unitary, one-piece construction.'  Therefore [applicant] did not act as a lexicographer and define the phrase 'unitary, one-piece construction.'  Moreover the '914 application does not contain any disclosure that renders the PTO's interpretation of that term unreasonable."  The Federal Circuit went on to explain that "[t]he specification of the '914 application describes an embodiment that constructs the dental tip by insert molding.  Thus, under the broadest reasonable construction the 'unitary, one-piece construction' includes products made by insert molding."  The Court concluded that the BPAI did not err in either its interpretation of the contested claim term or its anticipation analysis.