Federal Circuit Finds Broadest Reasonable Interpretation Does Not Encompass Legally Incorrect Interpretations

In In Re Skvorecz, 92 USPQ2d 1020 (Fed. Cir. 2009), Robert Skvorecz invented a wire chafing dish which can be nested with other chafing dishes, but which can be more easily separated. According to the specification, the separation is made easier due to offsets in the legs of the chafing dish, which prevents the nested chafing dishes from becoming wedged together.  After the application was originally issued as a patent, Mr. Skvorecz filed a reissue application in order to make various corrections.  The Examiner rejected claims 1-5 and 7 under 35 U.S.C. § 102 in view of U.S. Patent No. 5,503,062 (the Buff patent), and specifically found that the Buff patent disclosed a “wire chafing stand comprising a first rim of wire steel … having at least two wire legs with each wire leg having two upright sections … and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first rim for laterally displacing each wire leg relative to said first rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging” as recited in claim 1.

Mr. Skvorecz argued that, while the Buff patent discloses a wire leg 48, there is no disclosure that the wire leg 48 had an offset. 

While reversing on other issues, the Board of Patent Appeals and Interferences affirmed the rejection of claims 1 and 2, and entered new grounds of rejection for failure to comply with the written description and definiteness requirement of 35 U.S.C. § 112. In rejecting Mr. Skvorecz’s arguments, the Board specifically noted that the wire leg 48 was not a leg, but a transverse member, and that the term “comprising” allowed a situation in which not all legs included an offset.  On appeal, the Federal Circuit reversed the rejections. 

In regards to the anticipation, rejection, the Federal Circuit first noted that, while claims during examination are to be given their broadest reasonable interpretation, this protocol “does not include giving claims a legally incorrect interpretation” and is not a rule of claim construction.  Instead, the Federal Circuit cited to In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999), and MPEP 2111 for the proposition that the protocol is used as an “aid in sharpening and clarifying the claims during the application stage, when claims are readily changed.”  The Federal Circuit found that the Board’s use of the term “comprising” was legally incorrect since claim 1 clearly recited that each leg have an offset, and the wire 48 which was a leg did not include the offset.  Since the Buff patent did not disclose each feature of claim 1, the Federal Circuit reversed the Board.

On the issue of definiteness, the Board had found that the phrase “welded to said wire legs at the separation” in claim 5 was indefinite under 35 U.S.C. § 112 since there was a lack of antecedent basis for the separation.  The Federal Circuit acknowledged Mr. Skvorecz’s argument that claim 5, which was rejected for being indefinite, had already issued in the same form as a patent and had not been found indefinite by the prior Examiner or the Examiner during the reissue process.  In reversing the Board’s new rejection on this issue, the Federal Circuit noted that even MPEP 2173.02 acknowledges that the mere failure to provide antecedent basis does not automatically render a claim indefinite if the claim would be understood by one of ordinary skill in the art.

Lastly, in reversing the rejection for purposes of lack of written description, the Federal Circuit noted that compliance with 35 U.S.C. § 112 does not hinge on one factor.  Instead, the Federal Circuit quoted its prior decision in Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) that “the applicant may employ “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.”  The Board had held that the specification did not support the feature of “a plurality of offsets located . . . in said first rim” is not described in the specification, and at best, FIGs. 12 and 13 only show an offset in one rim or in every leg.  In rejecting this reasoning, the Federal Circuit noted that FIGs. 12 and 13 were partial views which were described in the specification in relation of the offsets to the rim and legs, and one of ordinary skill in the art would be able to discern how the completed device would be assembled in light of the specification.   Thus, the Federal Circuit found that, while no single Figure showed the complete device matching the claimed invention, one of ordinary skill in the art, using the partial views of FIGs. 12 and 13 and the specification, would understand the invention as claimed such that the claims meet the requirements for written description under 35 U.S.C. § 112.

Significance for Patent Applicants

For patent applicants, the fact that an Examiner may apply the broadest reasonable interpretation to the claims can prove a challenge where the Examiner’s interpretation is unclear or beyond any possible understanding of one of ordinary skill in the art.  When faced with such an unreasonable interpretation, the patent applicant will effectively be unable to properly evaluate a rejected claim to determine available claim scope or otherwise respond to the rejection.  In these situations, the applicant is faced with a choice of an expensive appeal to correct the Examiner’s interpretation, or to make unnecessary amendments which can harm the value of the resulting patent.

In Re Skvorecz serves as a reminder that Examiners must still provide evidence that their interpretation is reasonable in some manner.  Thus, prior to an appeal or amendment, where the Examiner does not provide such a rationale, patent applicants can rely upon In Re Skvorecz to force the Examiner to provide such information in order to ensure applicants are not giving up claim scope to which they are otherwise entitled.   

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