In Re: Nordt Development Co., LLC , 881 F.3d 1371 ( 2018 )

United States Court of Appeals
for the Federal Circuit
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IN RE: NORDT DEVELOPMENT CO., LLC,
Appellant
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2017-1445
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/241,865.
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Decided: February 8, 2018
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JEREMY COOPER DOERRE, Tillman Wright PLLC,
Charlotte, NC, argued for appellant.
JOSEPH GERARD PICCOLO, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for appellee Joseph Matal. Also represented
by NATHAN K. KELLEY, THOMAS W. KRAUSE, WILLIAM
LAMARCA.
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Before MOORE, TARANTO, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Nordt Development Co., LLC appeals the Patent Trial
and Appeal Board’s decision affirming an examiner’s
rejection of claims 1 and 14 of U.S. Patent Application No.
13/241,865. Ex Parte Nordt, No. 2015–001233, 2016 WL
6560183 (P.T.A.B. Nov. 1, 2016). For the reasons below,
2 IN RE: NORDT DEVELOPMENT CO., LLC
we disagree with the Board’s claim construction of “injec-
tion molded” as a process limitation with no patentable
weight, vacate the Board’s finding of anticipation, and
remand for additional proceedings consistent with this
opinion.
BACKGROUND
The ’865 application is directed to an elastic knee
brace having a framework (106) and a hinge (108) with a
strut (112) and arm components (114, 116). Application
Figure 1 is shown below and illustrates a side perspective
view of the front of the knee brace. The elastic nature of
the knee brace allows for and aids in the flexing of the
knee.
Claim 1 is representative of the two claims at issue on
appeal:
1. A support for an area of a body that includes a
hinge joint, comprising:
(a) a hinge mechanism comprising an in-
jection molded strut component and injec-
IN RE: NORDT DEV. CO., LLC 3
tion molded first and second arm compo-
nents;
(b) an elastically stretchable framework
injection molded about the strut and arm
components of the hinge mechanism, the
framework being configured to extend
across the hinge joint of the area of the
body, and the framework defining a flexi-
ble, elastically stretchable web of elasto-
meric interconnecting members;
(c) wherein the first arm component is
connected to the strut component such
that the first arm component is rotatable
relative to the strut component only about
a first pivot axis;
(d) wherein the second arm component is
connected to the strut component such
that the second arm component is rotata-
ble relative to the strut component only
about a second pivot axis; and
(e) wherein the strut component is config-
ured to extend with the framework across
the hinge joint such that the first pivot ax-
is is located on a first side of the hinge
joint and the second pivot axis is located
on a second, opposite side of the hinge
joint.
Nordt, 2016 WL 6560183, at *1 (emphases added).
The specification describes the “injection molded” as-
pect of the invention in a section titled “Preferred Manu-
facturing Methods” near the end of the written
description. This section includes the following relevant
paragraphs:
4 IN RE: NORDT DEVELOPMENT CO., LLC
[¶140] The supports of the invention and, in par-
ticular, the embodiments collectively shown and
described above preferably are manufactured in
injection molding processes, whereby the various
components of each embodiment of the support,
including, inter alia, the framework and strut
components, are integrally formed from elasto-
meric materials. The injection molding processes
preferably comprise, for each support, multi-step
injection molding, whereby each component can be
formed from different elastomeric materials hav-
ing different elastic stretchability even though the
components are integrally constructed.
[¶141] In particular, the strut components and
strap interface components can be formed through
injection molding of a first elastomeric material,
and then the framework can be formed through
injection molding of a second elastomeric material
about the strut components and strap interface
components. This is particularly useful in manu-
facturing embodiments having strut components
and strap interface components that are intended
to provide a degree of rigidity to side areas of the
framework, which can be readily made in an effi-
cient and cost effective manner.
J.A. 81.
During prosecution, the examiner rejected claims 1
and 14 as being anticipated by U.S. Patent No. 6,238,360
(“Gildersleeve”). Gildersleeve teaches a knee brace (10)
with a sleeve (12) containing a stiffener (22) having a
connector portion (40) which connects a proximal (36) and
a distal (38) portion. ’360 patent col. 3 ll. 27–33, col. 5
ll. 30–36.
IN RE: NORDT DEV. CO., LLC 5
Gildersleeve teaches that the sleeve (12) “may be
formed of any desirable fabric such as fully-, non-, or
partially-stretchable fabric which may or may not be
breathable” and “may be fabricated using conventional
stitching to conform to knees, elbows or other body joints
as desired.” Id. at col. 3 ll. 27–33. Gildersleeve also
teaches that the stiffener (22) “may be formed of elastic,
non-elastic or partially elastic material,” id. at col. 1,
ll. 56–58, and that in the preferred embodiment, stiffener
(22) is contained within a sheath (24) “formed by stitching
material to sleeve 12” and “generally configured in shape
to conform to the shape of the stiffener 22,” id. at col. 3,
ll. 60–63.
Comparing Gildersleeve to the claims, the examiner
found that Gildersleeve’s sleeve (12) met the claimed
framework, Gildersleeve’s connector (40) met the claimed
strut component, and Gildersleeve’s proximal (36) and
distal (38) portions met the claimed arm components.
Nordt did not dispute the examiner’s findings. Instead,
Nordt attempted to distinguish Gildersleeve by further
limiting the recited “strut” and “arm” components with
the phrase “injection molded.” Nordt also amended claim
1 to include clause (b), which recites, in part, “an elastical-
ly stretchable framework injection molded about the strut
and arm components of the hinge mechanism.” J.A. 23
(emphasis added). At the same time, Nordt argued that
6 IN RE: NORDT DEVELOPMENT CO., LLC
“injection molded” conveys “a clear structural limitation,”
but that “to the extent that the examiner would prefer
alternative, or additional, language related to such struc-
tural limitation, Applicant would be happy to make such
changes.” Nordt’s Amendment and Remarks dated Sep-
tember 24, 2012, at 11, in App. No. 13/241,865.
The examiner maintained the rejection based on Gil-
dersleeve after concluding that “injection molded” is “a
method of manufacturing an apparatus and . . . claim 1 is
an apparatus claim.” J.A. 28. The examiner explained
that “although Gildersleeve does not disclose [that] the
sleeve (12) is injection molded,” Gildersleeve anticipates
the claim because it “does disclose [that] the sleeve is a
flexible, elastically stretchable web of elastomeric inter-
connecting members [col. 3, ll. 27–30].” Id. The examiner
explained that “[i]n order to anticipate the injection
molded feature, the prior art must disclose the finished
product and not the method of making the product.” Id.
Nordt appealed the examiner’s rejection to the Board,
arguing that “injection molded” conveys a structural
limitation in that it describes the structural relationship
between the framework and the strut and arm compo-
nents. The Board affirmed the examiner’s rejection after
finding that “Appellants do not persuasively explain what
structural limitation is imparted by this manufacturing
practice.” Nordt, 2016 WL 6560183, at *2.
This appeal followed, and we have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Nordt’s only argument on appeal is that the Board
erred in construing claims 1 and 14 as product-by-process
claims with “injection molded” as the process limitation,
and thereby refusing to accord “injection molded” any
patentable weight. We review the Board’s claim construc-
tion, which is based on a review of only intrinsic evidence,
IN RE: NORDT DEV. CO., LLC 7
de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S Ct.
831, 841 (2015).
We have held that, when considering the patentability
of product claims that contain process limitations, claim
scope is generally based on the product itself, not the
process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)
(“[E]ven though product-by-process claims are limited by
and defined by the process, determination of patentability
is based on the product itself.”). If the process limitation
connotes specific structure and may be considered a
structural limitation, however, that structure should be
considered. In re Garnero, 412 F.2d 276, 279 (CCPA
1969) (holding that “interbonded one to another by inter-
fusion” connotes structure to a claimed composite and
should therefore be considered in the determination of
patentability).
The Board declined to accord “injection molded” any
patentable weight after finding that Nordt failed to ex-
plain the specific structural limitation imparted by “injec-
tion molded.” In doing so, the Board first presumed
“injection molded” to be a process limitation in a product-
by-process claim, then required Nordt to rebut its pre-
sumption by explaining the specific structural limitation
provided by “injection molded.”
Nordt primarily relies on Garnero on appeal. Specifi-
cally, Nordt argues that the Board erred in presuming the
“injection molded” limitation to be a process, rather than
structure. In Garnero, our predecessor court dealt with a
similar claim element and found that the Patent Office
erred in presuming the limitation “interbonded one to
another by interfusion” to be a process, rather than struc-
tural, limitation. Garnero, 412 F.2d at 279 (“The trouble
with the solicitor’s approach is that it necessarily assumes
that claim 1 should be construed as a product claim
containing a process, rather than structural, limitation.”).
The Garnero court found that the limitation “is as capable
8 IN RE: NORDT DEVELOPMENT CO., LLC
of being construed as a structural limitation as ‘inter-
mixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘weld-
ed,’ all of which at one time or another have been
separately held capable of construction as structural,
rather than process, limitations.” Id. The Garnero court
noted that “[t]he correct inquiry” is “whether the product
defined” in the claim is “patentably distinguishable over
[the prior art] in view of the structural limitation” defined
by the limitation. Id.
We agree with Nordt that the claim term at issue here
is structural and should have been afforded weight when
assessing patentability. While the Board typically will
not accord patentable weight to a process limitation in a
product-by-process claim, see, e.g., Thorpe, 777 F.2d at
697, this is not such an instance. In presuming “injection
molded” to be a process limitation, the Board confounded
two somewhat distinct inquiries—the first being whether
“injection molded” is a process or structural limitation,
the second being the precise meaning of the limitation if
structural.
As to the first inquiry, we find that “injection molded”
connotes structure. Although the application describes
“injection molded” as a process of manufacture, see
J.A. 81, ¶ 140 (explaining that the knee brace is prefera-
bly “manufactured in injection molding processes”), nei-
ther the Board nor the examiner dispute Nordt’s assertion
that “there are clear structural differences” between a
knee brace made with fabric components and a knee brace
made with injection-molded components. J.A. 34. For
one, the specification describes injection molding as
forming an integral component. See, e.g., J.A. 81, ¶ 140.
Indeed, the specification describes injection molded com-
ponents to be “integrally formed from elastomeric materi-
als” and states that “multi-step injection molding” may be
used, “whereby each component can be formed from
different elastomeric materials having different elastic
stretchability even though the components are integrally
IN RE: NORDT DEV. CO., LLC 9
constructed.” Id. Thus, at a minimum, the specification
demonstrates that “injection molded” connotes an integral
structure.
Moreover, as we have explained, “words of limitation
that can connote with equal force a structural characteris-
tic of the product or a process of manufacture are com-
monly and by default interpreted in their structural
sense, unless the patentee has demonstrated otherwise.”
3M Innovative Props. Co. v. Avery Dennison Corp.,
350 F.3d 1365, 1371–72 (Fed. Cir. 2003). Indeed, since
Garnero, we have in numerous instances held such limita-
tions to convey structure even when they also describe a
process of manufacture. See, e.g., Hazani v. U.S. Int’l
Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997)
(concluding that “chemically engraved” was not a process
term); Vanguard Prods. Corp. v. Parker Hannifin Corp.,
234 F.3d 1370, 1372 (Fed. Cir. 2000) (holding that the
claim term “integral” describes a structural requirement,
not the particular manufacturing process discussed in the
specification); 3M Innovative Props. Co., 350 F.3d at 1371
(finding “superimposed” to describe a structural relation-
ship and not a process); SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir. 2006) (New-
man, J., dissenting) (listing “a molded plastic” as an
example of a process limitation that connotes structure).
Here, not only does the specification itself convey a struc-
tural meaning to “injection molded,” Nordt has repeatedly
represented that it does.
We acknowledge that the issue presented in this case
was not an easy one. Indeed, we agree with the Board
that Nordt failed to persuasively or precisely explain
“what structural limitation is imparted by [‘injection
molded’].” Nordt, 2016 WL 6560183, a *2. See J.A. 33,
Nordt’s April 10, 2014, Appeal Brief at 10, arguing only
that “injection molded” is “used to describe the structural
relationship between the framework and the strut and
arm components.” Had Nordt done so, it may well have
10 IN RE: NORDT DEVELOPMENT CO., LLC
succeeded in convincing the Board that the limitation
requires structure. Nordt’s failure to identify that struc-
ture, however, does not affect our conclusion, as the
structural nature of “injection molded” can be gleaned
from the plain claim language and the specification itself.
We remand for the Board to construe the “injection
molded” limitation in the first instance. While the specifi-
cation supports an interpretation that requires an inte-
gral structure, we leave it to the Board to determine
whether this claim language or the surrounding claim
language requires any additional structure.
CONCLUSION
Because the Board affirmed the examiner’s anticipa-
tion rejection based on an incorrect claim construction, we
vacate the rejection and remand for further proceedings
consistent with this opinion.
VACATED AND REMANDED
COSTS
Costs to Appellant.