Friday, September 16, 2011

In re Scroggie

The CAFC affirmed the BPAI in Scroggie: Because the Board correctly determined that the claims at issue would have been anticipated and obvious to one of skill in the art, this court affirms.

At issue was the meaning of "personal computer."

Of the legal points visited-->

This court reviews factual findings of the Board for substantial evidence. See In re Gartside, 203 F.3d 1305, 1312-16 (Fed. Cir. 2000). Claims appealed from the Board receive the broadest reasonable meaning in light of the specification. See In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). In addition, the applicant may act as a lexicographer by setting out a definition in some manner within the patent disclosure. See Intellicall, Inc. v. Phonomet- rics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992). A specification or file history must clearly identify an applicant’s unique definition. See Vitronics Corp. v. Concep- tronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “This Court thus reviews the PTO’s interpretation of disputed claim language to determine whether it is ‘reasonable.’” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997)). “The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.” Gartside, 203 F.3d at 1316. This court reviews the Board’s legal conclusions de novo. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000).

The problem for the patent applicant was that the applicant did NOT set out a definition of "personal computer" in the specification-->

The first question before this court is whether the Board’s interpretation of “personal computer” is reason- able. The representative claim recites only the term “personal computer.” Nowhere in the specification does Scroggie act as a lexicographer and define that term. Specifically, the ’939 application has no definition or explanation of “personal computer.” Scroggie has not ventured to add such a limitation or definition by amendment.

To act as a lexicographer, an applicant must define claim terms with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). This court has previously determined that it is improper to “attempt to redefine the claimed invention by impermissibly incorporating language appearing in the specification into the claims,” but it is proper for the specification of an application to be used “to interpret what the [Appellants] meant by a word or phrase in the claim.” Id.

Applicant's definition:

“Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO's definition unreasonable when the PTO can point to other sources that support its inter- pretation.” Morris, 127 F.3d at 1056. In this case, Scroggie cites to claims and parts of the specification to support the premise that the claim term “personal computer” requires access to the Internet and the ability to receive emails.

The CAFC dealt with the use of "as in" in a dictionary definition:

The Board omitted the phrase “as in an office or at home or school” as only exem- plary and not part of the definition. This court discerns no error in this omission. As the Board stated, the omit- ted portion was not part of the definition because the “as in” is not limiting. Thus, the record supports the reason- ableness of Board’s interpretation.

Of anticipation:

A claim is anticipated only if each and every element appears, either expressly or inherently, in a single prior art reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Anticipation depends on the claim interpretation of “personal computer” because Appellants do not dispute that all other limitations appear in the ‘675 patent. The Board’s definition of “personal computer” includes two relevant parts: (i) a microprocessor that (ii) is usable by an individual.

KSR was cited for obviousness:

This court examines claims 34, 47, and 60 under the requirements for obviousness in view of the ’675 patent. Obviousness requires evaluation of the “differences between the subject matter sought to be patented and the prior art” with an eye on “the subject matter as a whole . . . at the time the invention was made” from the perspec- tive of “a person having ordinary skill in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C § 103(a)).


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