Finding that the Patent Trial and Appeal Board (PTAB) erred in
rejecting patent claims after improperly construing an apparatus
claim element by ignoring what it deemed to be a recited method
step, the US Court of Appeals for the Federal Circuit vacated the
rejection and remanded to the PTAB for further proceedings. In
re: Nordt Dev. Co., LLC, Case No. 17-1445 (Fed. Cir., Feb. 8,
2018).
Nordt filed a patent application directed to an elastic knee
brace. The application included apparatus claims that, in response
to an anticipation rejection, were amended to include process
limitations reciting "injection molded" components. The
examiner maintained the anticipation rejection despite
acknowledging that the prior art did not disclose the
"injection molded" method. The examiner reasoned that the
claims were anticipated because "[i]n order to anticipate the
injection molded feature, the prior art must disclose the finished
product and not the method of making the product."
