Claim Interpretation – How Far Can an Examiner Go in Determining How Broad a Claim Is?

When an Examiner examines a patent application, the Examiner is supposed to apply a “broadest reasonable interpretation” standard. In D’agostino v. Mastercard Int’l Inc. (Fed Cir., December 22, 2016), the Federal Circuit placed limits on how broadly an Examiner may interpret a claim under the standard.

In the case, the claims were directed to improve security in a transaction (such as a credit card transaction) by authorizing the transaction by way of generating a limited use transaction code to be given by a customer to a merchant and concurrently withholding the credit card number from the merchant. In at least some claims, the claims were limited to a single merchant.

During prosecution and on appeal at the USPTO, the single merchant claims were rejected as the “single merchant” was construed by the USPTO Examiner (and again on appeal there) to encompass a merchant with multiple stores. For example, whereas the claim was likely intended to be directed to, for example, a single store, the claim was interpreted to encompass other stores in the chain as they were the same “merchant”. Support for the single store apparently exists in the specification. Consequently, on appeal at the Federal Circuit, the Court remanded that portion of the opinion.

As noted in the opinion, the broadest reasonable interpretation cannot include a legally incorrect interpretation.

In summary, while a claim might be written broadly, there must still be support for the broadness in the specification, and an Examiner cannot “add meaning” beyond that of the words of the claim or the specification.