Chapter §12.07 Proper Use of the Disclosure to Interpret the Claims

• Jurisdiction: United States

§12.07 Proper Use of the Disclosure to Interpret the Claims

Comparing claim against claim in a double patenting analysis necessarily requires that one understand what the words of the compared claims mean. This may properly involve consulting the entirety of the patent documents.

Consider again the example of a patentee who has already obtained a patent and has filed a second application for another patent. In performing the double patenting analysis, the USPTO examiner needs to understand the meaning of the claims in the patent ("reference patent"). For this reason, it is proper to consult the written description and drawings of the reference patent. This is not an improper use of the reference patent's disclosure as prior art against the later-filed application, but rather a proper use of the reference patent's disclosure as a claim interpretational aid.

Admittedly, the line between proper and improper use of the reference patent's disclosure may be a fine one. The Federal Circuit has suggested that...