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