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« Court Report | Main | Top Stories of 2013: #11 to #14 »

December 30, 2013



The panel is likely correct about the disclaimer with respect to strontium salt, but not for one of the reasons stated in the opinion:

"The Abstract, though not grammatically
a sentence, confirms the limiting disclaimer by identifying what AstraZeneca said was “novel”: “The novel optically pure compounds Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salts of (+)-[omeprazole] or (- -[omeprazole], in particular sodium and magnesium salt form thereof . . .”
Id., Abstract.

I thought it was well understood that the abstract was not to be used as the basis for interpreting claim scope in view of what 37 CFR 1.72 says is the purpose of the abstract: "The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure."


Apparently, this language that used to be in 37 CFR 1.72(b) has been deleted: the "abstract shall not be used for interpreting the scope of the claims."


Now I know why: "Paragraph (b) of § 1.72 has been amended to prohibit the paper presenting the abstract to include any other portions of the application or other material. Presentation of material other than the abstract on the same page as the abstract makes the electronic indexing of the application more difficult. In addition, the last sentence of § 1.72(b) has been removed to eliminate the prohibition on using the abstract to interpret the claims to conform the rule to be consistent with Federal Circuit case law. See Hill-Rom Co. versus Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).


Good catch and self correction.

I think this serves to emphasize that a patent application is first and foremost a legal document, and not, say, an engineering article.

Care should be taken concerning every word that is included - and not included.


You comment is spot on. (As you see my memory on 37 CFR 1.72(b) as saying an abstract is not to be used for determining claims scope is now out of date now.) While the abstract was not originally intended by the USPTO to determine claim scope (i.e., it was intended as a search aid), the courts (including the Federal Circuit) have treated it otherwise. Results like in this case are why a definition section in the application is crucial; most claim construction issues are the result of failure to define claim terms, or not to define them clearly.

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