Amorphous claim terms, as opposed to those that are clear and well-defined, may be limited to the specific embodiments disclosed in the specification when there is no guidance as to how the claim terms can be more broadly applied to a wider range of implementations. Here, for example, a hose claimed as “cooperating with” a tire was found to be limited to a simple direct connection because there was nothing in the specification indicating that the patentee conceived of how the hose might “cooperate with” the tire other than by connecting to it directly as a conduit for air. “The meaning … is therefore sufficiently amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification.” It may therefore be best to provide a varied array of embodiments for amorphous claim terms subject to a variety of interpretations.
Background / Facts: The patent being asserted here is directed to a kit for repairing and inflating inflatable articles, particularly tires. The parties agree that the prior art discloses all the elements of claim 1, the broadest claim, except for an additional hose “cooperating with” the inflatable article.
Issue(s): Whether the term “cooperating with” should be construed broadly as encompassing not only direct connections to a tire but also indirect connections as in the prior art.
Holding(s): No. While recognizing that it does not generally “limit [the patentee] to his preferred embodiment,” the court ultimately found in this case that “[t]here is simply no guidance or indication [in the specification] whatsoever of how the additional hose might ‘cooperate with’ a tire, except as provided by the preferred embodiment. [] The meaning of ‘cooperate with’ is therefore sufficiently amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification.”