Ex Parte WILHELM HEINE: PTAB Rejects Examiner's Unreasonable Claim Construction

During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims.  When responding to these rejections, it is important to remember that there are limits to an Examiner's broadest reasonable interpretation.  In Ex parte Wilhelm Heine ("Heine"), the Patent Trial and Appeal Board ("PTAB") rejected the Examiner's unreasonable claim construction stating that "'[t]he correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.'"  Appl. No. 14/076,456, Decision on Appeal (Sept. 25, 2019) (hereinafter "Heine"), at 6 (quoting In re Smith Int'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017)).  Instead, Examiners need to rely on a claim interpretation that is consistent with the core, inventive concept of the invention.  Id.