Thursday, December 22, 2011

IN RE SP CONTROLS, INC.: CAFC affirms a "broadest reasonable interpretation" [BRI]

After the Board denied rehearing of the decision in re-examination 90/007,802, Ex parte SP Controls, Inc., No. 2009-6008, 2010 WL 3448889 (B.P.A.I. Aug. 31, 2010), SP Controls appealed to the CAFC.

The CAFC noted: During reexamination, 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). We “thus review[ ] 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 first step in the analysis is the claims themselves. The CAFC stated: We turn first to the claims themselves, in order to de- termine whether there is anything in their language which limits their reach to a frame in which labels and keys are in separate slots. See Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001). In this, the CAFC provided a definition of the term of art "comprising" --> “‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (quoting In re Baxter, 656 F.2d 679, 686 (CCPA 1981)).

The fate of SP Controls was sealed with the text This is significant, for the law is clear that, absent such language in the specifi- cation, the claims are not limited to preferred embodiments. See Resonate, Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1367 (Fed. Cir. 2003); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326-28 (Fed. Cir. 2002). This is particularly so where, as here, the claims are to be given their broadest reasonable construction. Cf. In re Bigio, 381 F.3d 1320, 1324-25 (Fed. Cir. 2004)

The bottom line: For the foregoing reasons, we affirm the Board’s decision sustaining the Examiner’s rejection of claims 1-6 of the '794 patent.

Claiming large is good, up to the point such claiming ensnares prior art under "broadest reasonable interpretation."

text of decision


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