Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

In re Nordt Development Co.

Process Limitation in Patent May Denote Structure

In re Nordt Development Co., 2018 WL 774097 (Fed. Cir. Feb. 8, 2018) (Moore, Taranto, STOLL) (PTAB) (3 of 5 stars)

Fed Cir vacates decision affirming examiner’s rejection of claims as anticipated. Nordt’s claims related to an elastic knee brace. The PTAB erred by presuming that the limitation “injection molded” was a process limitation in a product-by-process claim. Per Garnero, 412 F.2d 276 (CCPA 1969), the PTAB’s analysis should have focused on whether the limitation in question conferred a patentable distinction over the prior art. The opinion describes this as a two-part inquiry, “the first being whether ‘injection molded’ is a process or structural limitation, the second being the precise meaning of the limitation, if structural.” Op. at 8. As to the first part, the opinion finds “injection molded” to be a structural limitation, and describes how, per the specification, “‘injection molded’ connotes an integral structure” (as opposed to a fabric knee brace, which would have a multi-part construction). Id. at 8. It notes that this is a case where a single limitation not only denotes a process, but also a structural characteristic. On remand, the PTAB can determine the proper interpretation of “injection molded.”

KEYWORDS: INITIAL EXAMINATION; PRODUCT BY PROCESS; CLAIM CONSTRUCTION