In re Abbott Diabetes: BPAI decision vacated

The outcome of In re Abbott Diabetes: Because the Board’s rejections were based on unreasonable claim constructions and because the U.S. Patent and Trademark Office (“PTO”) concedes that the examiner’s official notice rejections should be withdrawn, we vacate-in-part and remand.

The patent office position: According to the PTO, Abbott was required to make a “clear disavowal” or an “express disclaimer” of claim scope. See Am. Acad. Sci., 367 F.3d at 1363 (“[A] patentee ‘may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, repre- senting a clear disavowal of claim scope.’”) (quoting Tele- flex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)); In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1516-1517.pdf