Words of limitation that can connote with equal force a structural characteristic of a product or a process of manufacture are interpreted as structural limitations by default.

| April 10, 2018

In Re Nordt Development Co., LLC

February 8, 2018

Before Moore, Taranto, and Stoll. Opinion by Stoll.


The Federal Circuit vacates and remands a decision of the Patent Trial and Appeal Board (“Board”) affirming the Examiner’s rejection of claims 1 and 14 of U.S. Patent Application No. 13/241,865 (the ‘865 application). Specifically, the Federal Circuit held that the Board erred in construing “injection molded” limitations in claims 1 and 14 of the ‘865 application as process limitations with no patentable weight.


The ‘865 application is directed to an elastic knee brace having a framework (106) and a hinge (108) with a strut (112) and arm components (114,116), as shown below:








Claim 1 of the ‘865 application is shown as below:

  1.  A support for an area of a body that includes a hinge joint, comprising:

a)  a hinge mechanism comprising an injection molded strut component and injection molded first and second arm components;

b)  an elastically stretchable frame work injection molded about the strut and arm components of the hinge mechanism, the framework being configured to extend across the hinge joint of the area of the body, and the framework defining a flexible, elastically stretchable web of elastomeric interconnecting members,

The specification describes that the framework and strut components may be integrally formed from different elastomeric materials using multi-step injection molding.

The Examiner cited U.S. Patent. No.  6,238,360 (“Gildersleeves) to reject claims 1 and 14 of the ‘865 application. Gildersleeve teaches a knee brace with a sleeve (12) containing a stiffener (22) having a connector portion (40) which connects a proximal (36) and a distal (38) portion, as shown below:










Gildersleeve teaches that the sleeve may be formed of any desirable fabric and the stiffener may be contained within a sheath (24) formed by stitching material to the sleeve. Gildersleeve does not disclose that the sleeve or any other components thereof are formed by injection molding.

In confirming the Examiner’s rejection, the Board held that the sleeve, connector, and proximal and distal portions in Gildersleeve correspond with the framework, strut component, and arm components respectively in ‘865 application. Furthermore, regarding the “injection molded” limitation, the Board presumed “injection molded” to be a process limitation in a product-by-process claim, and then required Nordt to rebut its presumption by explaining the specific structural limitation provided by “injection molded.” The Board then found that Nordt failed to explain the specific structural limitation imparted by “injection molded,” and accordingly declined to accord “injection molded” any patentable weight.

The Federal Circuit held that the Board erred in presuming “injection molded” to be a process limitation, and that the Board confounded two somewhat distinct inquiries-the first being whether “injection molded” is a process or structural limitation, and the second being the precise meaning of the limitation if structural.

As to the first inquiry, first, the Federal Circuit held that “injection molded” connotes structure. Specifically, the Federal Circuit found that there are clear structural differences between the knee brace made with injection-molded components in the ‘865 application and the knee brace made with fabric components in Gildersleeve. Furthermore, the specification demonstrates that “injection molded” at least connotes an integral structure. Then, the Federal Circuit cited numerous prior cases holding that the limitation that is as capable of being construed as a structural limitation such as “interbonded one to another by interfusion,”  “inter-mixed,” “ground in place,” “press fitted,” “etched,” “welded,” “superimposed,” “chemically engraved,” and “a molded plastic” as a structural, rather than process, limitation. “Words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.”

As to the second inquiry, the Federal Circuit agreed with the Board that Nordt failed to persuasively or precisely explain what structural limitation is imparted by “injection molded” limitation. Nordt only argued that “injection molded” is “used to describe the structural relationship between the framework and the strut and arm components” in its appeal brief. However, the Federal Circuit held that the structural nature of “injection molded” can be gleaned from the plain claim language and the specification itself. Thus, the Federal Circuit remands for the Board to construe the “injection molded” limitation.

Take away:

  1. In drafting a product claim, it is beneficial to include process limitations, especially when it is difficult to describe characteristics of the product.
  2. If during prosecution, the Examiner accords no patentable weight to a so-called “process limitation” in a product claim, Applicants can rebut the Examiner’s rejection by clearly describing what the structure this process limitation can impart to the product.

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