Preventing Technical Misinterpretation in Patent Applications

Patent examiners at the USPTO will often reject patent applications using the wrong standard for inherent disclosure of a claimed feature. For example, our client recently received an inherency-centric rejection that asserted one of skill in the art "would expect" the prior art to have certain claimed properties. This is the incorrect standard for establishing inherency. Here are some of my favorite case law quotes for pushing back against a weak rejection based on inherent disclosure. Par Pharm. v. TWI Pharms., 773 F.3d 1186, 1195-96, 112 USPQ2d 1945, 1952 (Fed. Cir. 2014) ("A party must, therefore, meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis - the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.") Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (“The very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” (Emphasis added)). As stated in MPEP 2112 “[i]n relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” (quoting Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)) (emphasis in original)).   “The inherent result must inevitably result from the disclosed steps; ‘[i]nherency . . . may not be established by probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). MPEP 2112: In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999): “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ ” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971), (“[T]he examiner must provide sufficient evidence or scientific reasoning to establish the reasonableness of the Examiner’s belief that the functional limitation is an inherent characteristic of the prior art.”) In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art).  Anyone have any others? #patents #patentlaw #uspto

#EPO - No to interpretative somersaults when interpreting claims. If the Patentee wanted to use a narrower meaning, they must remedy this by amending the claim. Catchword of T 2027/23 : A claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art. In cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the Boards of Appeal to reach such alignment by way of interpretative somersaults Even after G 1/24, the board finds no authority for interpreting a claim more narrowly than the wording of the claim as understood by the person skilled in the art would allow. https://lnkd.in/gV2qPWWg

We’re Reviewing Patent Claims in Mining Tech — Vague Language Won’t Hold Forever Over the past few years, I’ve reviewed several patents in the mining and geology sector, and I’m seeing a trend that’s becoming increasingly concerning. Many of these patent applications don’t stand out for their technical substance, but rather for how they’re written. They use broad terms like “geological analysis system,” “sensor adaptable to various formations,” or “predictive structural modeling,” without clearly explaining how these outcomes are achieved. The result? Patents that seem to cover a lot of ground—but technically say very little. Legally, they may meet formal requirements. But in practice: • They create roadblocks for genuine innovation. • They cause legal uncertainty for companies doing real development. • They fuel unnecessary litigation in a sector that should focus on progress, not paperwork. In mining and geology—where real value lies in terrain knowledge, precision instrumentation, and rigorous interpretation—these vague or “hollow” patents distort the system. They don’t protect technical knowledge; they protect ambiguity. So what can we do? • Demand greater technical clarity in patent descriptions. • Limit functional claims that lack a defined structure or methodology. • Promote a culture of technically sound patents, not just legally correct ones. A poorly grounded patent can become a weapon to block those who are truly innovating—whether it’s in gyros, orientation tools, downhole sensors, or advanced geological software. In our industry, intellectual property should protect real technical value, not legal smoke and mirrors. Have you seen similar cases in your field? #MiningInnovation #Geology #Patents #IntellectualProperty #TechLaw #GeotechnicalTools #SensorDesign #InnovationInMining #LegalInTech