In re Incept: The Broadest Reasonable Interpretation Has Limits
The U.S. Patent and Trademark Office gives pending patent claims their broadest reasonable interpretation during examination. The word “reasonable” is doing real work.
In In re Incept LLC, decided September 17, 2026, the Federal Circuit vacated a Patent Trial and Appeal Board obviousness decision because the Board had interpreted the term “flow barrier” too broadly. The Board’s construction treated almost any solid structure in the claimed location as a flow barrier. The Federal Circuit concluded that the claim language and specification required more: the barrier had to span between identified points in a way that blocked flow.
The opinion is nonprecedential, and the court did not hold the claim patentable. It remanded for the Board to reconsider patentability under the corrected construction. Even with those limits, the decision offers a practical lesson for patent applicants: broadest reasonable interpretation is not an invitation to detach a claim term from the structure and function the application actually describes.
What was the patent application about?
Incept was the real party in interest for U.S. Patent Application No. 16/886,099, titled “Anchoring Strain Relief Member.” The application concerns a medical catheter with a catheter shaft, a hub, and an anchoring strain-relief member. Claim 1 recited a sealing portion with multiple ridges, with each ridge forming a “flow barrier” between the catheter’s outer surface and the top of the ridge.
An examiner rejected claim 1 as obvious under 35 U.S.C. § 103 over an earlier patent publication. The examiner concluded that the reference disclosed the claimed structure except for a specified taper-angle limitation and that modifying the taper angle would have been obvious.
The claim-construction dispute concerned whether the prior-art structure actually satisfied the “flow barrier” requirement. The examiner understood the language principally as identifying a location: a solid structure positioned somewhere between the catheter’s outer surface and the ridge top. The PTAB accepted that interpretation and affirmed the rejection of claim 1.
The Federal Circuit’s September 17, 2026 opinion rejected the Board’s construction, vacated its decision, and remanded.
Broadest reasonable does not mean broadest possible
During examination, the USPTO applies a different claim-construction framework than a district court ordinarily applies to an issued patent. Pending claims receive their broadest reasonable interpretation consistent with the specification. The approach reflects an applicant’s ability to clarify or amend claims while prosecution remains open.
But the USPTO cannot choose a reading merely because the words can be stretched far enough to accommodate it. MPEP § 2111 states that the broadest reasonable interpretation must remain consistent with the specification, drawings, ordinary meaning, and the understanding of a person of ordinary skill in the art.
There is also an important balance. Limitations from a preferred embodiment should not automatically be imported into a claim. At the same time, the claim should not be interpreted as though the specification were irrelevant. The correct inquiry considers the claim language in the context of how the inventor described the invention.
Why the Federal Circuit rejected the Board’s reading
The Federal Circuit began with the grammar and relationships in claim 1. The claim did not merely require a generic barrier located near a ridge. It required each ridge to form a flow barrier between two identified points: the catheter outer surface and the top of the ridge. In the court’s view, even the broadest reasonable reading required flow to be blocked across that span.
The specification supported the same understanding. It repeatedly described the strain-relief member as providing a sealing and gripping surface. It also described the relevant connection as fluid-tight and explained that fluid should not travel through the sealed relationship. A construction allowing fluid channels between the supposed barrier and the catheter surface conflicted with that disclosure.
The Board’s interpretation effectively converted “flow barrier” into a label for any solid object occupying part of the claimed area. That reading accounted for location but not the barrier relationship the claim and specification described.
The dependent claims did not compel a broader result
The USPTO argued that dependent claims used more specific language about being free of fluid channels or forming a fluid-tight seal. Ordinarily, differences among claims can matter: a dependent claim should add a limitation to the claim from which it depends.
The Federal Circuit was not persuaded that those dependent claims required the Board’s construction. The dependent language addressed configurations involving contact with an elastomeric member and did not transform the independent claim’s “flow barrier” into any solid structure at the stated location. Claim differentiation remained a consideration, but it did not override the contextual meaning of the disputed term.
The construction error changed the obviousness analysis
Claim construction was not an academic detour. The Board’s obviousness conclusion rested on the premise that the prior art contained all claimed structure except the taper angle. Once the “flow barrier” limitation was construed differently, that predicate could no longer be assumed.
The Federal Circuit therefore did not decide whether claim 1 was ultimately obvious. It vacated and remanded so the Board could evaluate patentability using the court’s construction. That procedural result is important: Incept won another examination of the claim, not an order requiring the USPTO to issue a patent.
For an applicant challenging a rejection, the lesson is to connect claim interpretation to the rejection’s required findings. It is not enough to say that an examiner’s definition is too broad. The response should explain how the correct construction changes what the reference discloses, what remains missing, and why the asserted modification does or does not supply that limitation.
Drafting lessons for patent applications
In re Incept illustrates why claims and specifications should be drafted as one coordinated document. Tucker Law’s patent-application practice addresses the claims, written description, drawings, and fallback positions together rather than treating the claims as a detached summary.
Describe what a coined or functional term requires
Terms such as “barrier,” “connector,” “controller,” “filter,” or “sealing portion” can carry structural and functional implications. If a term is central to patentability, the specification should explain what relationships make the component qualify. Multiple embodiments can show that the invention is broader than one physical design while preserving the feature that matters.
Use consistent relationships in the claims and drawings
The Incept claim identified two points connected by the barrier, and the specification described why that relationship mattered. Drawings, reference numbers, and written descriptions should consistently support claimed spatial relationships. Ambiguous diagrams or shifting terminology can make it easier for an examiner to treat a term as a broad label rather than a meaningful limitation.
Build fallback positions deliberately
Dependent claims can add narrower features, operating conditions, materials, or relationships. They should create commercially useful fallback positions without casting doubt on the meaning of the independent claim. Applicants should review whether each dependent claim truly narrows the parent claim and whether prosecution arguments about one claim could unintentionally affect another.
Avoid relying on purpose alone
A specification’s statement of purpose can illuminate the claim, but the strongest record ties the purpose to actual claim language and disclosed structure. An argument that “the invention is supposed to seal” is less persuasive if the claim never requires a barrier, contact, span, or other relationship that performs the sealing function.
How to respond when an Office Action reads a term too broadly
A useful response starts by stating the examiner’s construction with precision. Applicants sometimes argue about the prior art without identifying the interpretation that allowed the reference to be mapped to the claim. That can leave the central disagreement hidden.
Next, walk through the claim language as a whole. Grammar, antecedent relationships, modifiers, and the interaction among elements may show why an isolated dictionary meaning is incomplete. Then connect the claim to the specification and drawings without simply importing a preferred embodiment.
Finally, address the rejection under the corrected construction. Identify the missing disclosure and explain why the examiner’s proposed modification does not cure it—or, when appropriate, amend the claim to make the intended distinction express. The prosecution record should make clear both what the applicant is claiming and why the cited reference falls short.
If the disagreement cannot be resolved through amendment, interview, or written response, an appeal to the Patent Trial and Appeal Board may be appropriate. Preserving the construction issue and its effect on the rejection is essential for meaningful review.
How Incept differs from district-court claim construction
The case arose from examination of a pending application, not an infringement lawsuit involving an issued patent. That distinction affects both the governing framework and the applicant’s options. During prosecution, claims can generally be amended, and the USPTO applies broadest reasonable interpretation. District courts ordinarily construe issued claims under the framework used in infringement and validity litigation.
Both settings still require attention to the intrinsic record. Tucker Law’s overview of patent claim construction explains how claim language, the specification, and prosecution history can shape scope after issuance. The strategic point is consistent across both settings: language added during drafting or prosecution may later determine whether a product or prior-art reference falls inside the claim.
The practical takeaway
In re Incept does not eliminate broad claim interpretation at the USPTO. It reinforces its boundary. The Patent Office may read pending claims broadly, but the reading must still correspond to the language and to the invention described in the specification.
Patent applicants should identify construction disputes early, develop the intrinsic record carefully, and show how the correct interpretation changes the prior-art analysis. Businesses reviewing an important patent portfolio should likewise examine whether the specification supports the commercial scope the claims are expected to carry.
If an Office Action depends on an interpretation that strips a claim term of its disclosed meaning, contact Tucker Law to evaluate the claim language, specification, cited references, and available prosecution options.
This article provides general information and is not legal advice. Claim construction and patentability depend on the complete application, prior art, prosecution record, and governing authority.
