United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: NORDT DEVELOPMENT CO., LLC,

Appellant

______________________ 

2017-1445

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 13/241,865.

______________________ 

Decided: February 8, 2018

______________________ 

JEREMY COOPER DOERRE, Tillman Wright PLLC, 

Charlotte, NC, argued for appellant.

 JOSEPH GERARD PICCOLO, Office of the Solicitor, 

United States Patent and Trademark Office, Alexandria, 

VA, argued for appellee Joseph Matal. Also represented 

by NATHAN K. KELLEY, THOMAS W. KRAUSE, WILLIAM 

LAMARCA. 

______________________ 

Before MOORE, TARANTO, and STOLL, Circuit Judges.

STOLL, Circuit Judge. 

Nordt Development Co., LLC appeals the Patent Trial 

and Appeal Board’s decision affirming an examiner’s 

rejection of claims 1 and 14 of U.S. Patent Application No. 

13/241,865. Ex Parte Nordt, No. 2015–001233, 2016 WL 

6560183 (P.T.A.B. Nov. 1, 2016). For the reasons below, 
2 IN RE: NORDT DEVELOPMENT CO., LLC

we disagree with the Board’s claim construction of “injection molded” as a process limitation with no patentable 

weight, vacate the Board’s finding of anticipation, and 

remand for additional proceedings consistent with this 

opinion. 

BACKGROUND

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). Application 

Figure 1 is shown below and illustrates a side perspective 

view of the front of the knee brace. The elastic nature of 

the knee brace allows for and aids in the flexing of the 

knee. 

Claim 1 is representative of the two claims at issue on 

appeal: 

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 injec-
IN RE: NORDT DEV. CO., LLC 3

tion molded first and second arm components; 

(b) an elastically stretchable framework 

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; 

(c) wherein the first arm component is 

connected to the strut component such 

that the first arm component is rotatable 

relative to the strut component only about 

a first pivot axis; 

(d) wherein the second arm component is 

connected to the strut component such 

that the second arm component is rotatable relative to the strut component only 

about a second pivot axis; and 

(e) wherein the strut component is configured to extend with the framework across 

the hinge joint such that the first pivot axis is located on a first side of the hinge 

joint and the second pivot axis is located 

on a second, opposite side of the hinge 

joint.

Nordt, 2016 WL 6560183, at *1 (emphases added).

The specification describes the “injection molded” aspect of the invention in a section titled “Preferred Manufacturing Methods” near the end of the written 

description. This section includes the following relevant 

paragraphs: 
4 IN RE: NORDT DEVELOPMENT CO., LLC

[¶140] The supports of the invention and, in particular, the embodiments collectively shown and 

described above preferably are manufactured in 

injection molding processes, whereby the various 

components of each embodiment of the support, 

including, inter alia, the framework and strut 

components, are integrally formed from elastomeric materials. The injection molding processes 

preferably comprise, for each support, multi-step 

injection molding, whereby each component can be 

formed from different elastomeric materials having different elastic stretchability even though the 

components are integrally constructed. 

[¶141] In particular, the strut components and 

strap interface components can be formed through 

injection molding of a first elastomeric material, 

and then the framework can be formed through 

injection molding of a second elastomeric material 

about the strut components and strap interface 

components. This is particularly useful in manufacturing embodiments having strut components 

and strap interface components that are intended 

to provide a degree of rigidity to side areas of the 

framework, which can be readily made in an efficient and cost effective manner. 

J.A. 81. 

During prosecution, the examiner rejected claims 1 

and 14 as being anticipated by U.S. Patent No. 6,238,360

(“Gildersleeve”). Gildersleeve teaches a knee brace (10) 

with a sleeve (12) containing a stiffener (22) having a 

connector portion (40) which connects a proximal (36) and 

a distal (38) portion. ’360 patent col. 3 ll. 27–33, col. 5 

ll. 30–36. 
IN RE: NORDT DEV. CO., LLC 5

Gildersleeve teaches that the sleeve (12) “may be 

formed of any desirable fabric such as fully-, non-, or 

partially-stretchable fabric which may or may not be 

breathable” and “may be fabricated using conventional 

stitching to conform to knees, elbows or other body joints 

as desired.” Id. at col. 3 ll. 27–33. Gildersleeve also 

teaches that the stiffener (22) “may be formed of elastic, 

non-elastic or partially elastic material,” id. at col. 1, 

ll. 56–58, and that in the preferred embodiment, stiffener 

(22) is contained within a sheath (24) “formed by stitching 

material to sleeve 12” and “generally configured in shape 

to conform to the shape of the stiffener 22,” id. at col. 3, 

ll. 60–63. 

Comparing Gildersleeve to the claims, the examiner 

found that Gildersleeve’s sleeve (12) met the claimed 

framework, Gildersleeve’s connector (40) met the claimed 

strut component, and Gildersleeve’s proximal (36) and 

distal (38) portions met the claimed arm components. 

Nordt did not dispute the examiner’s findings. Instead,

Nordt attempted to distinguish Gildersleeve by further 

limiting the recited “strut” and “arm” components with 

the phrase “injection molded.” Nordt also amended claim 

1 to include clause (b), which recites, in part, “an elastically stretchable framework injection molded about the strut 

and arm components of the hinge mechanism.” J.A. 23

(emphasis added). At the same time, Nordt argued that 
6 IN RE: NORDT DEVELOPMENT CO., LLC

“injection molded” conveys “a clear structural limitation,” 

but that “to the extent that the examiner would prefer 

alternative, or additional, language related to such structural limitation, Applicant would be happy to make such 

changes.” Nordt’s Amendment and Remarks dated September 24, 2012, at 11, in App. No. 13/241,865. 

The examiner maintained the rejection based on Gildersleeve after concluding that “injection molded” is “a 

method of manufacturing an apparatus and . . . claim 1 is 

an apparatus claim.” J.A. 28. The examiner explained

that “although Gildersleeve does not disclose [that] the 

sleeve (12) is injection molded,” Gildersleeve anticipates 

the claim because it “does disclose [that] the sleeve is a 

flexible, elastically stretchable web of elastomeric interconnecting members [col. 3, ll. 27–30].” Id. The examiner 

explained that “[i]n order to anticipate the injection

molded feature, the prior art must disclose the finished 

product and not the method of making the product.” Id. 

Nordt appealed the examiner’s rejection to the Board, 

arguing that “injection molded” conveys a structural 

limitation in that it describes the structural relationship 

between the framework and the strut and arm components. The Board affirmed the examiner’s rejection after 

finding that “Appellants do not persuasively explain what 

structural limitation is imparted by this manufacturing 

practice.” Nordt, 2016 WL 6560183, at *2. 

This appeal followed, and we have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

Nordt’s only argument on appeal is that the Board 

erred in construing claims 1 and 14 as product-by-process

claims with “injection molded” as the process limitation, 

and thereby refusing to accord “injection molded” any 

patentable weight. We review the Board’s claim construction, which is based on a review of only intrinsic evidence, 
IN RE: NORDT DEV. CO., LLC 7

de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S Ct. 

831, 841 (2015). 

We have held that, when considering the patentability 

of product claims that contain process limitations, claim 

scope is generally based on the product itself, not the 

process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) 

(“[E]ven though product-by-process claims are limited by 

and defined by the process, determination of patentability 

is based on the product itself.”). If the process limitation 

connotes specific structure and may be considered a 

structural limitation, however, that structure should be 

considered. In re Garnero, 412 F.2d 276, 279 (CCPA 

1969) (holding that “interbonded one to another by interfusion” connotes structure to a claimed composite and 

should therefore be considered in the determination of 

patentability).

The Board declined to accord “injection molded” any 

patentable weight after finding that Nordt failed to explain the specific structural limitation imparted by “injection molded.” In doing so, the Board first presumed

“injection molded” to be a process limitation in a productby-process claim, then required Nordt to rebut its presumption by explaining the specific structural limitation 

provided by “injection molded.” 

Nordt primarily relies on Garnero on appeal. Specifically, Nordt argues that the Board erred in presuming the 

“injection molded” limitation to be a process, rather than 

structure. In Garnero, our predecessor court dealt with a 

similar claim element and found that the Patent Office 

erred in presuming the limitation “interbonded one to 

another by interfusion” to be a process, rather than structural, limitation. Garnero, 412 F.2d at 279 (“The trouble 

with the solicitor’s approach is that it necessarily assumes 

that claim 1 should be construed as a product claim 

containing a process, rather than structural, limitation.”). 

The Garnero court found that the limitation “is as capable 
8 IN RE: NORDT DEVELOPMENT CO., LLC

of being construed as a structural limitation as ‘intermixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘welded,’ all of which at one time or another have been 

separately held capable of construction as structural, 

rather than process, limitations.” Id. The Garnero court 

noted that “[t]he correct inquiry” is “whether the product 

defined” in the claim is “patentably distinguishable over

[the prior art] in view of the structural limitation” defined 

by the limitation. Id. 

We agree with Nordt that the claim term at issue here 

is structural and should have been afforded weight when 

assessing patentability. While the Board typically will 

not accord patentable weight to a process limitation in a 

product-by-process claim, see, e.g., Thorpe, 777 F.2d at 

697, this is not such an instance. In presuming “injection 

molded” to be a process limitation, the Board confounded 

two somewhat distinct inquiries—the first being whether 

“injection molded” is a process or structural limitation, 

the second being the precise meaning of the limitation if 

structural. 

As to the first inquiry, we find that “injection molded”

connotes structure. Although the application describes 

“injection molded” as a process of manufacture, see

J.A. 81, ¶ 140 (explaining that the knee brace is preferably “manufactured in injection molding processes”), neither the Board nor the examiner dispute Nordt’s assertion 

that “there are clear structural differences” between a 

knee brace made with fabric components and a knee brace 

made with injection-molded components. J.A. 34. For 

one, the specification describes injection molding as 

forming an integral component. See, e.g., J.A. 81, ¶ 140. 

Indeed, the specification describes injection molded components to be “integrally formed from elastomeric materials” and states that “multi-step injection molding” may be 

used, “whereby each component can be formed from 

different elastomeric materials having different elastic 

stretchability even though the components are integrally 
IN RE: NORDT DEV. CO., LLC 9

constructed.” Id. Thus, at a minimum, the specification 

demonstrates that “injection molded” connotes an integral 

structure. 

Moreover, as we have explained, “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.” 

3M Innovative Props. Co. v. Avery Dennison Corp., 

350 F.3d 1365, 1371–72 (Fed. Cir. 2003). Indeed, since 

Garnero, we have in numerous instances held such limitations to convey structure even when they also describe a 

process of manufacture. See, e.g., Hazani v. U.S. Int’l 

Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997) 

(concluding that “chemically engraved” was not a process 

term); Vanguard Prods. Corp. v. Parker Hannifin Corp., 

234 F.3d 1370, 1372 (Fed. Cir. 2000) (holding that the 

claim term “integral” describes a structural requirement, 

not the particular manufacturing process discussed in the 

specification); 3M Innovative Props. Co., 350 F.3d at 1371 

(finding “superimposed” to describe a structural relationship and not a process); SmithKline Beecham Corp. v. 

Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir. 2006) (Newman, J., dissenting) (listing “a molded plastic” as an 

example of a process limitation that connotes structure). 

Here, not only does the specification itself convey a structural meaning to “injection molded,” Nordt has repeatedly 

represented that it does. 

We acknowledge that the issue presented in this case 

was not an easy one. Indeed, we agree with the Board

that Nordt failed to persuasively or precisely explain 

“what structural limitation is imparted by [‘injection 

molded’].” Nordt, 2016 WL 6560183, a *2. See J.A. 33, 

Nordt’s April 10, 2014, Appeal Brief at 10, arguing only 

that “injection molded” is “used to describe the structural 

relationship between the framework and the strut and 

arm components.” Had Nordt done so, it may well have 
10 IN RE: NORDT DEVELOPMENT CO., LLC

succeeded in convincing the Board that the limitation 

requires structure. Nordt’s failure to identify that structure, however, does not affect our conclusion, as the 

structural nature of “injection molded” can be gleaned 

from the plain claim language and the specification itself. 

We remand for the Board to construe the “injection 

molded” limitation in the first instance. While the specification supports an interpretation that requires an integral structure, we leave it to the Board to determine 

whether this claim language or the surrounding claim 

language requires any additional structure. 

CONCLUSION

Because the Board affirmed the examiner’s anticipation rejection based on an incorrect claim construction, we 

vacate the rejection and remand for further proceedings 

consistent with this opinion. 

VACATED AND REMANDED

COSTS

Costs to Appellant.