In In re Buszard, 84 USPQ2d 1749 (Fed. Cir. 2007), applicants’ invention is directed to a flexible polyurethane foam used in a flame retardant composition. The Examiner rejected the claims as anticipated in view of Eling et al., which describes a rigid foam that is made flexible through crushing. The Board of Patent Appeals and Interference (BPAI) affirmed the Examiner, and the applicants appealed the BPAI decision on the grounds that the Examiner’s interpretation of the term “flexible” cannot encompass “rigid.”
In reviewing the BPAI decision, the Federal Circuit held that, under the Administrative Procedure Act, 5 U.S.C. ‘706, all decisions from the BPAI are reviewed to determine if the Board’s decision is supported by substantial evidence. Dickinson v. Zurko, 527U.S. 150, 165 (1999). Moreover, for purposes of anticipation, the record must show that all limitations in the claim are met by a single reference where the claims are given their broadest reasonable interpretation.
In reviewing the record and the claims, the Federal Circuit noted that both parties agree that “a person of ordinary skill in the field of polyurethane foams knows that a flexible foam and a rigid foam have different chemical structures and are produced from different chemical reactants.” However, on appeal, the Solicitor argued that such a distinction is not relevant since, “when a rigid foam is mechanically crushed, the chemical bonds are broken and the product is the same as the flexible product of a flexible foam reaction mixture.” However, the Federal Circuit was unable to find, in the record, where this rejection was previously discussed or what evidentiary support there was for this interpretation. As such, the Federal Circuit held that the late presentation of this ground of rejection, which is not supported by the record, “was proposed without support or citation, and without opportunity for Buszard to refute it” and was “not sufficiently creditable to warrant further consideration.”
Moreover, the Federal Circuit also found that such an interpretation was contrary to the broadest reasonable interpretation of the claims in light of the specification. According to the Federal Circuit, “[n]o matter how broadly ‘flexible foam reaction mixture’ is construed, it is not a rigid foam reaction mixture.” Therefore, the Federal Circuit found the BPAI’s equating of rigid and flexible to be not supported by the record, and reversed the Board’s decision on those grounds.
Significance for Patent Applicants
While the Examiner is generally required to take the broadest reasonable interpretation, it is important to ensure that the Examiner’s interpretation is truly reasonable. Moreover, such interpretations must be supported by the evidence of record, as the Federal Circuit emphasized in In re Buszard. As such, it is possible to challenge the Examiner’s interpretation using the Administrative Procedures Act as in In re Buszard, or by providing counter evidence as to the true meaning to one of ordinary skill in the art. In either case, an attack on the reasonableness needs to focus on what evidence exists in the record which supports the applicant’s definition in order to prevail against an Examiner’s overly broad interpretation.