Fletcher YoderThe Federal Circuit finds that the B.P.A.I. incorrectly construed the claim term “comprising”, further noting that the protocol of giving claims their broadest reasonable interpretation during examination is solely an examination expedient and does not include giving claims a legally incorrect interpretation.
Patentee cannot always satisfy written description requirement, in supporting expansive claim language, merely by clearly describing one embodiment of the claimed invention; specification of patent for method of digital compression using discreet wavelet transforms, which discloses single method of creating “seamless” DWT, does not entitle inventor to claim any and all means for achieving that objective.
In view of the specification and testimony that the inventor had not, at the time the patent application was filed, considered a particular structural arrangement encompassed by claims broadened during prosecution, the Federal Circuit invalidates these claims based on the written description requirement.