Thursday, April 15, 2010

USPTO found "too broad" in giving "broadest reasonable construction"

In Suitco Surface, an appeal of a re-exam, the CAFC found: Because the PTO’s rejection was
based on an unreasonable construction, this court vacates and remands.

Within the case:

“During reexamination, as with original examination, the PTO must give claims
their broadest reasonable construction consistent with the specification.” In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). This Court thus reviews the PTO's
interpretation of disputed claim language to determine whether it is “reasonable.”
In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).

The rub:

Although the PTO emphasizes that it was required to give all “claims their
broadest reasonable construction” particularly with respect to claim 4’s use of the open-
ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
Cir. 1997) (“the open-ended term comprising . . . means that the named elements are
essential, but other elements may be added”), this court has instructed that any such
construction be “consistent with the specification, . . . and that claim language should be
read in light of the specification as it would be interpreted by one of ordinary skill in the
art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d
1544, 1548 (Fed. Cir. 1983)) (emphasis added).

Too broad:

The PTO’s construction here, though certainly broad, is unreasonably broad.
The broadest-construction rubric coupled with the term “comprising” does not give the
PTO an unfettered license to interpret claims to embrace anything remotely related to
the claimed invention. Rather, claims should always be read in light of the specification
and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust
Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or
interpreted in light of its specifications.”).



During prosecution of the reexamination, it seems the Patent Holder failed to point out that the broadest reasonable interpretation applied to MPF claims is constrained by 35 U.S.C. 112, 6th paragraph. Instead, this argument was first presented in the appeal brief.


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