Can the interpretation of transitional phrases in patent claims be affected by the specification?
Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
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