A Tale of Two Methods: Conditions Precedent and Broadest Reasonable Interpretation

PTAB Decision:  Ex parte Schulhauser, Appeal No. 2013-007847 (April 29, 2016)

Background In an appeal of an Examiner’s rejection of claims under 35 U.S.C. § 103, the Board addressed the application of the broadest reasonable interpretation claim construction standard.

The technology related medical devices for monitoring physiological conditions. The independent method claim recited monitoring of cardiac conditions incorporating an implantable medical device applying a series of steps.  It was not disputed that the prior art did not disclose all of these steps.  However, as noted by the Board, “[i]n claim construction, ‘the name of the game is the claim,’” quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).  Some of the recited method steps were conditional on a condition precedent, e.g., “triggering an alarm state, if the electrocardiac signal data is not within the threshold electrocardiac criteria.”  Indeed, the steps with conditions meant that the claim, under the broadest reasonable interpretation, “covers at least two methods;”  not just the one promoted by the applicant.  Since one of those methods did not require certain steps to be taken, the Board found that prior art was not required to reach those steps. 

The Board contrasted these method claims to the apparatus claim that recited functions substantially similar to the steps recited in the method claims.  Since the apparatus claim “requires structures for performing the function should the condition occur,” even under the broadest reasonable interpretation, it was necessary for the examiner to identify prior art that rendered the structure obvious.

Issue:  How to interpret a method claim under the broadest reasonable interpretation standard when steps are subject to a condition precedent?

Outcome:  The obviousness rejections of the method claims were affirmed.  The obviousness rejection of the apparatus claim was reversed.

Prosecution Takeaway:  Recognize that when drafting method claims with a conditional limitation, that limitation may not be a limitation for purposes of determining patentability.