Monday, September 07, 2009

IN RE ROBERT SKVORECZ: confusion over comprising?

The Skvorecz case examines the meaning of a fundamental term used in claim drafting, the word "comprising."

In a re-issue proceeding, the claim was:

1. A wire chafing stand comprising
a first [an upper] rim of wire steel which
forms a closed geometrical configuration circumscribing a first surface area,
[a lower rim of wire steel forming a closed geometrical configuration
circumscribing a second surface area with said first surface area being larger
than said second surface area] and
having at least two [a plurality of] wire
legs with each wire leg having two upright sections interconnected to one
another [at a location below the lower rim] in a configuration forming a base
support for the stand to rest upon with each upright section extending
upwardly from said base support to from an angle equal to or greater than
90° with respect to a horizontal plane through said base support and being
affixed to the first [upper] rim adjacent one end thereof [and to said lower rim
at a relatively equal distance below the point of attachment to said upper rim]
and further comprising a plurality of offsets located either in said upright
sections of said wire legs or in said first [upper] rim for laterally displacing
each wire leg relative to said first [upper] rim

to facilitate the nesting of a
multiplicity of stands into one another without significant wedging.

This claim was rejected as anticipated over US 5,503,062 ("Buff"). The BPAI noted
that Mr. Skvorecz “failed to demonstrate that the functional characteristics of his claimed
invention are not inherent in the structure disclosed by Buff.” The Board stated that
“[a]lthough the legs in Buff run along the long axis of the base rather than across the end of
the long axis as disclosed by applicant, such is not precluded by claim language.”

The CAFC stated: On rehearing the Board stated that Buff’s wire 48 is a “transverse member” and not a wire leg,
and therefore that it need not have a displacing offset. Mr. Skvorecz states, and we agree,
that Buff’s wire 48 is a leg of the Buff structure. The Board’s contrary statement is
unsupported by any evidence.

The CAFC continued:

The PTO now presses the theory that claim 1 is anticipated because it can be
construed to include wire legs without offsets, because the claim uses the open-ended
transition term “comprising.”2 The PTO argues that because the signal “comprising” is
open-ended, not every wire leg is required by claim 1 to include offsets. The PTO states
that the usage “comprising” permits the Skvorecz structure to include legs without offsets,
although claim 1 states that “said wire legs” and “each wire leg” have offsets. Thus the
PTO argues that even if claim 1 were construed to require that every wire leg has an offset,
the Buff patent shows offsets 52 that laterally displace wire leg 49, apparently arguing that
it is irrelevant whether Buff’s wire leg 48 has an offset. Thus the Board held that claim 1,
when given its broadest interpretation, reads on the Buff structure and thus is anticipated.

The CAFC said the BPAI misconstrued the word "comprising":

The PTO has not correctly construed the signal “comprising.” This signal simply
means that the device may contain elements in addition to those explicitly mentioned in the
claim. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In
the patent claim context the term ‘comprising’ is well understood to mean ‘including but not
limited to.’”). The Board erred in holding that some wire legs of the Skvorecz device, as
claimed, need not have an offset, when the claims state that each wire leg has an offset.

Did the BPAI miscontrue? The relevant skeletal form of claim 1, as proposed in the re-issue-->

1. A wire chafing stand comprising:

having at least two wire legs

and further comprising a plurality of offsets located either in said upright
sections of said wire legs or in said first rim for laterally displacing
each wire leg relative to said first rim
to facilitate the nesting of a
multiplicity of stands into one another without significant wedging.

The issue might seem to be whether Buff disclosed a wire chafing dish with at least two wire legs with
an offset to facilitate nesting.

The "plurality of offsets" refers to "said wire legs" (the antecedent of which is "at least two wire legs") OR to "said first
rim displacing each wire leg." As a general matter, it is not good to claim in the alternative [ie, using the word "or"]. There is anticipation of the claim if either alternative is previously disclosed. The CAFC opinion may not have been precise in stating: although claim 1 states that “said wire legs” and “each wire leg” have offsets.

If one focusses on the alternative which includes "said wire legs," one wonders about the CAFC text -- The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset. --. The words "said wire legs" refer back to "at least two" and do NOT require "all" wire legs in that embodiment of Skvorecz claim 1 to have an offset. The CAFC reasoning may be problematic.

**Elsewhere in the opinion, concerning the concept of "broadest reasonable interpretation":

The protocol of giving claims their broadest reasonable interpretation during
examination does not include giving claims a legally incorrect interpretation. This protocol
is solely an examination expedient, not a rule of claim construction. Its purpose is to
facilitate exploring the metes and bounds to which the applicant may be entitled, and thus
to aid in sharpening and clarifying the claims during the application stage, when claims are
readily changed. See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007); In re Cortright,
165 F.3d 1353, 1358 (Fed. Cir. 1999). As explained in the Manual of Patent Examining
Procedure (MPEP) at §2111, entitled “Claim Interpretation; Broadest Reasonable
Interpretation,” “Applicant always has the opportunity to amend the claims during
prosecution, and broad interpretation by the examiner reduces the possibility that the claim,
once issued, will be interpreted more broadly than is justified.”3 This practice may also be
useful in reissue examination. See In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).

The signal “comprising” does not render a claim anticipated by a device that contains
less (rather then more) than what is claimed. Here the examination expedient of “broadest
reasonable interpretation” was incorrectly applied to interpret “comprising” to mean that not
all the Skvorecz wire legs need have offsets, despite the claims that state that “each wire leg” has an offset.
The Buff device does not have an offset located in each
wire that serves as a leg to support the device. In the Buff structure both the transverse
wire 48 and the longitudinal wire 49 provide the bottom support analogous to wire legs, and
it is undisputed that wire segment 48 does not have an offset. Anticipation cannot be
found, as a matter of law, if any claimed element or limitation is not present in the
reference. The “anticipation” rejection is reversed.

**On claim indefiniteness:

35 U.S.C. §112 ¶2 states:
The specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.

The MPEP at §2173.02 (“Clarity and Precision”) states that the “focus during the
examination of claims for compliance with the requirement for definiteness of 35 U.S.C.
[§]112, second paragraph is whether the claim meets the threshold requirements of clarity
and precision, not whether more suitable language or modes of expression are available.”
The MPEP states:
Definiteness of claim language must be analyzed, not in a vacuum, but in
light of:

(A) The content of the particular application disclosure;
(B) The teachings of prior art; and
(C) The claim interpretation that would be given by one possessing the
ordinary level of skill in the pertinent art at the time the invention was

Id. The reissue examiner had not rejected any claim on this ground, but the Board entered
a new ground of rejection, rejecting claim 5 for indefiniteness.

**The Skvorecz opinion did NOT cite Exxon Research and Engineering v. US, which states:

Section 112 paragraph 2 of the Patent Act requires that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. We have stated the standard for assessing whether a patent claim is sufficiently definite to satisfy the statutory requirement as follows: If one skilled in the art would understand the bounds of the claim when read in light of the specification, then the claim satisfies section 112 paragraph 2. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993).
While that standard is easy to state, it has not always proved easy to apply. The Supreme Court explained the reason underlying the indefiniteness doctrine 60 years ago in United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236, 55 USPQ 381, 385 (1942):
A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field. Moreover, the claims must be reasonably clear-cut to enable courts to determine whether novelty and invention are genuine.

In determining whether that standard is met, i.e., whether “the claims at issue [are] sufficiently precise to permit a potential competitor to determine whether or not he is infringing,” Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993), we have not held that a claim is indefinite merely because it poses a difficult issue of claim construction. We engage in claim construction every day, and cases frequently present close questions of claim construction on which expert witnesses, trial courts, and even the judges of this court may disagree. Under a broad concept of indefiniteness, all but the clearest claim construction issues could be regarded as giving rise to invalidating indefiniteness in the claims at issue. But we have not adopted that approach to the law of indefiniteness. We have not insisted that claims be plain on their face in order to avoid condemnation for indefiniteness; rather, what we have asked is that the claims be amenable to construction, however difficult that task may be. If a claim is insolubly ambiguous, and no narrowing construction can properly be adopted, we have held the claim indefinite. If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds. See, e.g., Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1557, 37 USPQ2d 1609, 1617 (Fed. Cir. 1996) (rejecting indefiniteness argument after construing claims; stating that “when claims are amenable to more than one construction, they should when reasonably possible be interpreted to preserve their validity”); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581, 37 USPQ2d 1365, 1372 (Fed. Cir. 1996) (court chose the narrower of two equally plausible claim constructions in order to avoid invalidating the claim). By finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity, see N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1579, 28 USPQ2d 1333, 1339 (Fed. Cir. 1993), and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal.

**The text in the Exxon case is highly relevant to a thread on the 271Blog titled Want to Improve Patent Quality? Tweak the Incentives for Low-Quality Patents First , which advances proposals of R. Polk Wagner, including
(1) encouraging early clarity by having the PTO conduct meaningful claim construction analysis with the applicant during examination,

***UPDATE. Comment to PatentHawk, Patent Prospector on 8 Sept 09-->

A question for broje. In the claim of form:

1. A wire chafing stand comprising:

having at least two wire legs

and further comprising a plurality of offsets located EITHER in said upright
sections of said wire legs OR in said first rim for laterally displacing
each wire leg relative to said first rim
to facilitate the nesting of a
multiplicity of stands into one another without significant wedging.

why can one not have additional wire legs without offsets in an embodiment having "at least two wire legs" (say exactly two wire legs) with offsets in those (two) "said wire legs." [Forget about the embodiment "each wire leg."]


Of broje's text -- It would go against the teachings of the specification, and make the claimed invention inoperable for its intended purpose. As I pointed out to you in Chisum's Canons of Claim Construction way back when, it is impermissible to construe the claim in such a way that it does not read on the disclosed invention. --, one recalls the words of the CAFC in Chef America v. Lamb-Weston: "a nonsensical result does not require the court to redraft the claims of the patent." Or, recall claim 1 of the wheelbarrow in Radio Steel v. MTD, 221 USPQ 657 (CAFC 1984) [and the fate of patentee's request to "read the claim in light of the remainder of the patent disclosure." See LBE, Just The Facts, Ma'am, IPT, p. 9 (January 2003) and even recall the sleeve in Festo: ]. Here, the "at least two wire legs" have to "facilitate the nesting." Did the patentee in Chef America need the functional limitation "to make edible bread"?


Of -- Applicants don't get to issue until they excise the embodiments that are no longer in accordance with the claims to issue, or else state explicitly that they are not within the issuing claims. --, it is the claims which define the invention. The claims of a patent are the sole measure of the patent grant. Once the claims issue in a final particular form, the protected invention is, as a matter of law, that form. Bandag, Inc. v. Al Bolser's Tire Stores, Inc., 750 F.2d 903, 223 USPQ 982 (Fed. Cir. 1984). If the claims are amended during prosecution, it is the amended, final claims that define the invention. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 56 USPQ2d 1481 (Fed. Cir. 2000). As to the confusion of Quillen and Webster on this point, refer to
That which is disclosed but not claimed enters the public domain. See Johnson and Johnston. There is no need for an explicit disclaimer.


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