Dr. Jonathan Platt, Esq.

A recent Patent Trial and Appeal Board (PTAB) opinion, Ex parte Burrow (Appeal 2023-003565, Application 16/124,248 Dec. 20, 2024) revisited a recurring problem in drafting claims, that of distinguishing a single part or object that performs multiple recited features, from separate parts that are connected together. What’s the proper language to describe the distinction? Unitary? Integrally-formed? Formed of a single piece of material? Of continuous material? Monolithic? (The last being the “of one stone” in this piece’s title.) Some combination of these?

Burrow involved a step-and-support device to be attached to building materials for use as a temporary step or support member. The device was the subject of multiple prior art rejections, one of which hinged on the interpretation of the last clause of claim 1, “wherein said step and support device is integrally formed.”

The reference cited in the anticipation rejection of claim 1 disclosed the recited features, but only in a number of interconnected parts. Can interconnected parts be considered “integrally formed”? The Examiner thought so, pointing to a dictionary definition of “integral” as meaning a “complete unit; a whole,” and observing that the applicant never described “integrally formed” in its specification as “a single, continuous, monolithic piece,” the construction that the applicant was apparently now relying upon. The applicant disagreed, stating that the phrase “integrally formed” requires “more than merely interconnected parts.”

The Board came down on the side of the applicant on this issue. It recognized that “’integral encompasses more than a unitary, i.e., monolithic construction,” citing a Federal Circuit case[1] in which “integral” was considered broad enough “to embrace constructions united by such means as fastening and welding.” Nonetheless, the Board looked to the specification of the application, which described the step-and-support assembly as being “integrally formed or … formed from multiple pieces and assembled.” To the Board this made clear that the “integrally formed” language of the claim should be construed as excluding a device made from multiple pieces. Thus the anticipation rejection of claim 1 was reversed.[2]

So what’s the take-away on this issue? Probably the best thing to do is to stock the specification with the full panoply of possible terms and phrases listed above, and to do so with a statement that such terms are meant to contrast with multiple parts or pieces attached, fastened, or otherwise connected together. Different examiners prefer different language to indicate this sort of distinction, so it is good practice to write the application to allow flexibility in claiming. This belt-and-suspenders approach might draw the ire of the ruthless villain Frank (played by Henry Fonda) from Sergio Leone’s Once Upon a Time in the West,[3] but in any event one shouldn’t rely on spaghetti-western characters for patent law advice. Stick with the patent attorneys instead.

[1] Advanced Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1072 (Fed. Cir. 1989).

[2] Other prior art rejections of the claims were affirmed, so in the end none of the claims in the appeal were found patentable.

[3] https://youtu.be/mDUVoycDAgc?t=68 (“How can you trust a man who wears both a belt and suspenders? The man can’t even trust his own pants.”)