The U.S. Patent Office’s Patent Trial and Appeal Board (PTAB) recently reversed an Examiner’s obviousness rejections in part because the Examiner improperly ignored a claim limitation. A common examination practice in the U.S. is for Examiners to treat one or more claim limitations as merely recitations of “intended use” that do not impact the patentability of a claimed product and can thus be ignored. The ignoring of these claim limitations reduces the features the Examiner needs to find in the prior art to reject the claims. This leads to frustration by applicants and attorneys because less than all the claim limitations are actually examined. In its decision issued March 5, 2018 in Appeal No. 2017-005003, the PTAB indicated that wholly ignoring a claim limitation can be reversible error. The PTAB indicated a claim limitation that is a measure of a property or characteristic cannot be ignored. This is good news for patent applicants as it may help curb the practice of Examiners ignoring claim limitations. Click here for the full opinion of the PTAB.
