# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE: NORDT DEVELO PMENT CO., LLC, Appellant

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2017

- 1445

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 13/241,865.

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Decided: February 8, 2018

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J EREMY C OOPER D OERRE , Tillman Wright PLLC, Charlotte, NC, argued for appellant.

J OSEPH G ERARD P ICCOLO , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Joseph Matal. Also represented by N ATHAN K. K ELLEY , T HOMAS W. K RAUSE , W ILLIAM L A M A RCA

.

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Before M OORE , T ARANTO , and S TOLL , Circuit Judges

. S TOLL , Circuit Judge

. Nordt Development Co., LLC appeals the Patent Trial and Appeal Board ’s decision affirming an e x aminer’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,IN RE : NORDT DEVELOPMENT CO ., LLC 2

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

w eight , vacate the Board’s finding of anticipation, and remand for additional proceedings consistent with this opinion

. B ACKGROUND
The ’865 application is directed to a n elastic knee brace having a framework (106) and a hinge (108) with a strut (112) and a rm components (114, 116)

. Application Figure 1 is shown below and illustrates a side perspective view of the front of the knee brace. T he 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 i njection molded strut component and inje c-IN RE : NORDT DEV

. CO ., LLC 3

tion molded first and second arm comp onents; (b) an elastical ly stretchable framework inje c tion molded about the strut and arm

comp o nents of the hinge mechanism, the framework being configured to extend across the hinge joint of the area of the body, and the framework d e fining a flex ible, elastically stretchable web of elast omeric interconnecting members; (c) wherein the first arm component is

connec t ed 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 comp onent is

co n nected to the strut component such that the se c ond arm component is rotat able relative to the strut component only about a second pivot axis; and (e) wherein the strut component is confi gured to extend with the framework across the hinge joint such that the first pivot a xis 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 (emphas e s added).
The specification describes the “ injection mol ded ” a spect of the invention in a section titled “Preferred Man ufacturing Methods” near the end of the written description . Th is section includes the following relevant paragraphs:IN RE : NORDT DEVELOPMENT CO ., LLC 4

[¶140] The supports of the invention and, in pa rticular, the embodiments collectively shown and described above preferably are manufactured in in jection molding processes, whereby the various components of each embodiment of the support, including, inter alia, the framework and strut components, are integrally formed from elast ome r ic materials. The injection molding processes

pre f erably comprise, for each support, multi

- step injection molding, whereby each component can be formed from different elastomeric materials ha ving different elastic stretchability even though the

compone nts 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 in jection molding of a second e lastomeric material about the strut components and strap interface components. This is particularly useful in man ufacturing embodiments having strut components and strap interface components that are intended to provide a degree of rigidity to side areas o f the framework, which can be readily made in an efficient and cost effective manner.

J.A. 81. During prosecution, t he examiner reject ed 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 desir able 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 c ontained 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, t he 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 dis tinguish Gildersleeve by further limit ing 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 elastica lly 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 thatIN RE : NORDT DEVELOPMENT CO ., LLC 6

“injection molded” conveys “ a clear structural limitation

, ” but that “to the extent that the examiner would prefer alternative, or additional, language related to such stru ctural limitation, Applicant would be happy to make such changes.” Nordt’s Amendment and Remarks dated Se ptember 24, 2012, at 11 , in App. No. 13/241,865

. The examiner maintained the rejection based on Gi ldersleeve 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 inte rconnecting 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 describe s th e structural relationship between the framework and the strut and arm comp onents. 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 juris diction under 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSION Nordt’s only argument on appeal is that the Board erred in construing claim s 1 and 14 as product

- by

- process claim s with “injection molded” as the process limitation

, and thereby refusing to a ccord “injection molded” any patentable weight

. W e review the Board’s claim constru ction , which is based on a review of only intrinsic evidence

,IN RE : NORDT DEV

. CO ., LLC 7

de novo. Teva Pharm. USA, Inc. v. Sand oz, Inc

., 135 S Ct. 831, 841 (2015).
We have held that, when considering the patentability of product claim s that contain process limitation s , 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 limi tation , however, that structure should be considered. In re Garnero , 412 F.2d 276, 279 (CCPA 19 6 9) (holding that “interbonded one to another by inte rfusion” connotes structure to a claimed composite and should therefore be considered in the determination of patentability ).

T he Board declined to accord “injection molded” any patentable weight after finding that Nordt failed to e xplain the specific structural limitation imparted by “inje ction molded .” In doing so, the Board first presumed “injection molded” to be a process limitation in a product

by

- process claim

, then required Nordt to rebut its pr esumption 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
structur e

. In Garnero

, our predecessor court dealt with a similar claim element and found that the Patent Office erred in pre suming the limitation “interbonded one to another by interfusion” to be a process, rather than stru ctural, 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 contain ing a process, rather than structural, limitation

. ”)

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

of being construed as a structural limitation as ‘inte rmixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘wel ded,’ 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

, s ee , e.g ., Thorpe , 777 F.2d at 697, t his is not such an instance. In pre suming “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 app lication describes “injection molded” as a process of manufacture, see J.A. 81 , ¶ 140 (exp laining that the knee brace is prefer ably “ manufactured in injection molding processes”), ne ither 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 compo nent. Se e, e.g ., J.A. 81, ¶ 140

. Indeed, the specification describes injection molded co mponents to be “ integrally formed from elastomeric mater ials” 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 integrallyIN RE : NORDT DEV

. CO ., LLC 9

constructed .” Id

. Thus, at a minimum, the specificati on demonstrates that “injection molded” connotes an integral
structure.
Moreover, as we have explained, “words of limitation that can connote with equal force a structural characteri stic of the product or a process of manufacture are co mmonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.” 3M Innovative Prop s. Co. v. Avery Dennison Corp

., 350 F.3d 1365, 1371

– 72 (Fed. Cir. 2003). Indeed, since Garnero , we have in numerous instances held such limit ati ons to convey structure even when they also describe a process of manufacture. See

, e.g ., Haz ani 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. Co rp . 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 Prop s. Co. , 350 F.3d at 1371 (f

inding “superimposed” to describe a structural relatio nship and not a process); SmithKline Beecham Corp. v. Apotex Corp ., 439 F.3d 1312, 1322 (Fed. Cir. 2006) (Ne wman, 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 stru ctural 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 “inject ion molded” is “ used to describe the structural relationship between the framework and the strut and arm components. ” Had Nordt done so, it may well haveIN RE : NORDT DEVELOPMENT CO ., LLC 10

succeeded in convincing the Board that the limitation requires structure. Nordt’s failure to identif y that stru cture , however, does not affect our conclusion , as the
structur al 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 requir es an int egral structure, we leave it to the Board to determine whether this claim language or the surrounding claim language requires any additional structure

. C ONCLUSION

B ecause the Board affirmed the examiner ’s anticip ation rejection based on an incorrect claim construction , we vacate the rejection and remand for further proceedings consistent with this opinion.

VACATED AND REMANDED

C OSTS Costs to Appellant.