Wednesday, January 16, 2013

Relying on patent figures to interpret patent claims

Within Ex parte TROUILLY, one has some arguments concerning the use of figures to interpret claims.

Appellants also argue that the Examiner may not use Becker’s
Figure 2 as a source of teaching that the middle chamber is shorter than the side chambers because “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Reply Br. 3-4 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)). We agree that Becker does not indicate that its figures are drawn to scale. However, even when patent drawings are not drawn to scale, they may nevertheless be used to establish relative sizes and
relationships between the various components which are clearly depicted in those drawings. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir 1991). The Examiner merely relies on Figure 2 for its description of the relative sizes and relationships among the three chambers shown in the figure. The Examiner does not rely on “precise proportions” shown in Becker’s Figure 2. Instead, the Examiner finds that the figure discloses a middle chamber that is shorter than the side chambers. We agree that Becker’s Figure 2 discloses this relationship to a skilled artisan, and thus the Examiner’s reliance on the figure is permitted. In re Aslanian, 590 F.2d 911, 914 (C.C.P.A. 1979).

Appellants argue that the Examiner erred in finding that Becker’s Figure 1 discloses the claimed length ratios of claims 18 and 20. Reply
Br. 6-7. Appellants contend that the Examiner improperly relied on Becker’s Figure 1 to teach the claimed length relationships (Reply Br. 7), because “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Reply Br. 4 (quoting Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, (Fed. Cir. 2000)).   The Federal Circuit applied the principles of Hockerson in a later case even more relevant to the case before us. Nystrom v. TREX Co., Inc., 424 F.3d 1136 (Fed. Cir. 2005). In Nystrom, an accused infringer relied upon a computer model generated from Figure 3 in a prior art patent (“Zagelmeyer”) to prove anticipation of Nystrom’s claim 18 directed to a wooden plank with a convex top surface, which recited in pertinent part:
said convex top surface being manufactured to have a radius of curvature with a slightly rounded or curved configuration extending across the top surface from one side edge to the other, defining a difference in thickness between the longitudinal centerline and the opposite side edges, with the  ratio of said difference in thickness to the width of the board being about 1:40.
Nystrom, 424 F.3d at 1148 (emphasis in original). A Trex employee carefully measured Zagelmeyer’s Figure 3, which illustrated a plank with a convex top surface. The Trex employee used those measurements to generate a computer model of the plank to establish that the plank had a relevant thickness ratio of 1:39 or 1:37. Id. Based on the computer model, the district court concluded that Zagelmeyer anticipated claim 18. The Federal Circuit reversed the district court because “the district court erred in determining invalidity based on evidence improperly derived from a patent drawing” in violation of the principles of Hockerson and In re Wright, 569 F.2d 1124, 1127 (C.C.P.A. 1977) (rejecting PTO’s reliance on drawings not to scale to find that prior art taught “chime length of roughly 1⁄2 to 1 inch for a whiskey barrel”). Nystrom, 424 F.3d at 1149. 

Appellants correctly point out that Becker contains no written description of the length of chamber 16 in comparison to the lengths of chambers 12, 14. Reply Br. 7. We further agree with Appellants that Becker fails to disclose that its Figures are drawn to scale. Id. The Examiner thus relies solely upon Becker’s Figure 1 for his finding that Becker teaches the length relationships of independent claims 18 and 20. In doing so, the Examiner errs in the same way that the district court erred in Nystrom. Therefore, we reverse the rejection of claims 18-20 under § 103(a) as obvious over Becker.
Separately, of the appellants trying to import limitations from the specification into the claims -->

Appellants argue in response that the recitation of “substantially less” in claims 1 and 21 and “substantially greater distance” in claim 12 distinguish these claims from the container illustrated in Becker’s Figure 2. Reply Br. 2-3. Appellants contend that a skilled artisan understands “substantially” as claimed to mean “considerable in value, degree, amount or extent.” Id. at 3 (citing American Heritage Dictionary of the English Language, Fourth Edition, Houghton Mifflin Company). Appellants then attempt to quantify “considerable in value” by referring to the Specification, which discloses multi-chambered containers in which the middle chamber is “about two-thirds to about three-quarters” of the length of “either or both side chambers.” Reply Br. 3. The Specification describes this range of length ratios as being desirable. See, e.g., Spec., para. [0044]. However, independent claims 1, 12, and 21 do not recite these ratios.

The Federal Circuit recently reiterated the well-established principle that “it is not proper to import from the patent’s written description limitations that are not found
in the claims themselves.” Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1375 (Fed. Cir. 2012). Therefore, we decline to import this range of ratios from the Specification into claims 1, 12, and 21.


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