The broadest reasonable interpretation rubric employed by the PTO does not ordinarily cover prior art implementations explicitly disclaimed in the specification. Here, for example, a hand-held remote control device claimed as being “adapted to be held by the human hand” and including “a thumb switch” was found to distinguish over a broad view of conventional desk-bound computer mice because the specification specifically distinguished over such devices. “The broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.” This would be a good case to consult and cite in response to a rejection that relies on an overly broad interpretation of the claims to read on the acknowledged state of the art.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO is directed to a remote control device for making selections on television or computer screens. The claims recite a hand-held device with “a body adapted to be held by the human hand” and “a thumb switch … adapted for activation by a human thumb.”
Issue(s): Whether the PTO’s broadest reasonable interpretation of the claimed remote control as reading on a conventional desk-bound mouse, which can be grasped from the top by a human hand and which has a finger click switch that could in theory be operated with a thumb, is appropriate.
Holding(s): No. “[T]he specification expressly distinguishes the remote control device from a desk-bound device like the one disclosed in [the prior art]. … The broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification. Based on the language in the specification, we reject the Board’s unreasonably broad construction. … The proper understanding of ‘adapted to be held by the human hand’ would not include gripping a desk-bound device such as, for example, the desk-bound mouse disclosed in [the prior art]. … The Board’s broad construction of ‘thumb switch being adapted for activation by a human thumb’ as being merely capable of activation by a human thumb is unreasonable in view of the specification’s clear teaching that the patentee intended a narrower meaning.”