By Kevin E. Noonan --
It is a bedrock principle of patent practice that the U.S. Patent and Trademark Office gives the terms of claims under examination their broadest reasonable construction. The rationale is that, in this way, the applicant has the opportunity to argue or amend the claims to be as broad as the prior art permits, and precludes the applicant from expanding beyond these limits the scope of granted claims it asserts against accused infringers. Regardless of the soundness of this practice as a policy matter, as applied by the Office it can (and frequently does) exceed the boundaries of reasonableness: the Office frequently takes a position regarding the scope of a claim term that is completely unreasonable. As one example, the Office has, on occasion, determined that essentially any nucleic acid can hybridize with any other, since the complexity of almost any sequence contains short stretches of sequence found in many other sequences; such reasoning is then applied to reject any claim depending on specific hybridization.
The practice of construing claim terms unreasonably arose in an opinion handed down from the Federal Circuit today, In re Suitco Surface, Inc. Patentees appealed final rejection in an ex parte reexamination based on anticipation. The Federal Circuit, in an opinion by Judge Rader joined by Judges Prost and Moore, vacated and remanded the Office's grounds of rejection based, in part, on the unreasonable construction of claim terms that expanded their scope to encompass the prior art.
Reexamination was on U.S. Patent No. 4,994,514, which claimed a "floor finishing material" used on "floor surfaces [made] of wood, linoleum, terrazzo, [or] concrete," particularly as used on bowling lanes and athletic courts. Representative claim 4 is in Jepson claim format (with emphasis added):
4. On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:
at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and
a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor.
The opinion notes that the underlined claim terms had been construed during a prior litigation: "material for finishing" to mean "a material that makes more durable the underlying surface of the floor, and is applied for that purpose," and "uniform flexible film" to mean "the material must be of a uniform thickness, and excludes material in which there are any variations in thickness." The Federal Circuit in an appeal from grant of summary judgment against the patentee, disagreed, saying:
The text of claim 4 leaves little ambiguity as to the meaning of "material" - namely, at least one elongated sheet of a uniform flexible film of clear plastic having a thickness between about one and about twenty-five mils. What remains in dispute is the precise meaning of the phrase "for finishing." In the context of claim 4, "finishing" clearly refers to providing a clear, uniform layer on the top surface of a floor. Significantly, there is no indication in claim 4 as to what level of durability, if any, the "finish" layer must have. Thus, claim 4 implies a broad meaning for the term "finishing," which is consistent with the dictionary definition of "finish." See, e.g., Webster's Ninth New Collegiate Dictionary 464 (1984) (defining "finish" as "the final treatment or coating of a surface," but not identifying any specific properties).
The District Court granted summary judgment a second time on remand, based on the "uniform flexible film" limitation. The Federal Circuit again disagreed, based on whether the accused infringing article was required to have a uniform thickness throughout. During the second remand, the defendant 3M (an amicus here) filed the ex parte reexamination request which resulted in a stay of the remand litigation and, ultimately, this appeal. Claims 4-8 were finally rejected as being anticipated by U.S. Patent No. 3,785,102 to Amos and U.S. Patent No. 4,543,765 to Barrett, these rejections being the subject matter of this appeal. (A third rejection, based on U.S. Patent No. 4,328,274 to Tarbutton was not appealed.)
Briefly, the Amos reference teaches "a floor covering pad comprising a plurality of plastic sheets connected together by a plurality of adhesive layers . . . designed to be used right before entry into a clean room or a hospital bay to remove dirt from the shoes or wheels of incoming traffic." Each of the plurality of sheets is exposed one at a time and allowed to function to remove dirt until the adhesive on the sheet is filled, and then the sheet is removed and the next sheet is exposed and so forth. The Barrett reference teaches "the use of a clear plastic film connected to a floor with an adhesive layer" to "temporarily protect a floor during construction."
During the reexamination, the examiner asserted rejections based on anticipation by these references, and the Board affirmed. The Board construed the two relevant claim terms more broadly that the District Court: the term "material for finishing the top surface of a floor" was construed to mean "requiring a material that is structurally suitable for placement on the top surface of a floor." Thus, any layer placed above a floor fulfilled this requirement, "regardless of whether it was the top or final layer." The term "uniform flexible film" was construed by the Board to mean "including, for example, a flexible film having the same thickness throughout, as well as a flexible film having the same textured surface throughout." Suitco challenged the Board's decision affirming the asserted rejections based on these constructions, particularly asserting that none of the prior art cited the "uniform" limitation.
The Federal Circuit's opinion acknowledged the practice before the Office that claim terms are to be given "their broadest reasonable construction consistent with the specification," citing In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007), saying that its inquiry was thus whether the Board's construction was "reasonable," citing In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Applying these principles, the Court directly held that the Office's construction of the term "material for finishing" was unreasonable:
The express language of the claims requires a "material for finishing the top surface of the floor." '514 patent col.7 ll.67-68 (emphases added). A material cannot be finishing any surface unless it is the final layer on that surface. Otherwise, the material would not be "finishing" the surface in any meaningful sense of the word.
The PTO's proffered construction ignores this reality by allowing the finishing material to fall anywhere above the surface being finished regardless of whether it actually "finishes" the surface. Indeed, according to the PTO, the finishing surface need only be "structurally suitable for placement on the top surface of the floor" -- i.e., several layers can be placed on top of the "finishing" layer. If the PTO's construction were accepted, a prior art reference with carpet on top of wood, on top of tile, on top of concrete, on top of a thin adhesive plastic sheet anticipates the claims in question because an adhesive plastic sheet falls at some point in the chain of layers. This construction does not reasonably reflect the plain language and disclosure of the '514 patent.
The problem, according to the Court, is that the Office has ignored the part of the standard that limits the bounds of what is "reasonable" to what is consistent with the specification: the rubric is not merely that claims must be given "their broadest reasonable construction" but that they be given "their broadest reasonable construction consistent with the specification" (emphasis added). Moreover, claims are to be read "in light of the specification as it would be interpreted by one of ordinary skill in the art," citing In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).
The opinion particularly rejects the Office's reliance upon and justification of its construction because the patentee used the term "comprising" in the claim. "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," according to the opinion. Citing Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (perhaps on the panel's mind after its extensive citation in the en banc Ariad v. Eli Lilly appeal), the Court held that the Office must always construe claims "in light of the specification and the teachings of the underlying patent." Here, both the "express language of the claim and the specification" mitigated against the Office's construction, and "require the finishing material to be the top and final layer on the surface being finished."
This opinion certainly provides ammunition for applicants facing unreasonable interpretations of claim terms during prosecution. It will be interesting to see whether the Office adopts the Federal Circuit's restrictions on unfettered claim interpretation, or continues with its occasional flights of fancy in construing claim terms during prosecution.
In re Suitco Surface, Inc. (Fed. Cir. 2010)
Panel: Circuit Judges Rader, Prost, and Moore
Opinion by Circuit Judge Rader