Fed. Cir. says BPAI didn't properly apply "each" (In re Skvorecz:)

Today I'll discuss a Federal Circuit review of a BPAI decision, In re Skvorecz. I didn't find much coverage of this case in the usual patent blogs, although Patent Hawk did cover it (here). 

Inventor Skvorecz filed a reissue on his patent on a wire stand, and when he lost at the the BPAI, the inventor appealed to the Federal Circuit. The Federal Circuit addressed three issues (reissue capture, anticipation, and written description) but this post will discuss only the anticipation rejection.

The anticipation rejection turns on whether "comprising" allows the presence of an extra instance of X that doesn't meet the limitations that the claim imposes on X, as long as some Xs do meet the limitation. In other words, does a collection of round and square widgets anticipate "a plurality of widgets, each widget being round". Some widgets aren't round...but are the square widgets part of the claimed plurality, or can they be ignored?

The relevant portions of the claim at issue are shown below:

1.  A wire chafing stand comprising an upper rim of wire steel... a lower rim of wire steel ...having at least two wire legs with each wire leg having two upright sections interconnected to one another...a plurality of offsets located either in said upright sections of said wire legs or in said upper rim...

The Board found that the reference did have two legs, each with multiple offsets located in the upright sections of the leg. 

On rehearing at the BPAI, the Applicant argued that the claim language requires that "each and every wire leg in the chafing stand of claim 1 (not selected wire legs) must include an offset," and that the Board had overlooked a third leg in the reference which does not include an offset. Therefore, Applicant argued the reference did not anticipate.

On rehearing, the Board first found that the third leg referred to by the Applicant is a transverse member rather than a leg. The Board also summarily dismissed the Applicant's argument about the meaning of "each", simply stating that "the claim language does not preclude a third wire leg that does not include an offset." On appeal to the Federal Circuit, the PTO explained its reasoning, relying on the special meaning of "comprising":

The PTO argues that because the signal “comprising” is open-ended, not every wire leg is required by claim 1 to include offsets. The PTO states that the usage “comprising” permits the Skvorecz structure to include legs without offsets, although claim 1 states that “said wire legs” and “each wire leg” have offsets.

The Federal Circuit agreed with the Applicant: "The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claim states that each wire leg has an offset." (Decision, p. 8.) "The signal 'comprising' does not render a claim anticipated by a device that contains less (rather then more) than what is claimed." (Decision, p. 8.)

After interpreting "each leg of the at least two legs" to mean "every leg", the Court went on to chastise the PTO for stretching the claims past the broadest reasonable interpretation to a "legally incorrect interpretation." (Decision, p. 8.)

But was the PTO that far off? As pointed out by the Federal Circuit blog 717 Madison Place (here), back in 2003 the Federal Circuit itself took the position that "each" did not mean "every", in the case ResQNet.com v. Lansa:

Claim 1 of the ’608 patent recites “each of a plurality of fields,” which does not carry the same meaning as “every field.”  Rather, the recitation of “plurality” suggests the use of “at least two.” See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term means, simply, ‘the state of being plural.’”).  While “at least two” may mean “every” under some circumstances, the two terms are not synonymous.  In sum, “each of a plurality of fields” means “each of at least two fields.”

I found it interesting that in In re Skvorecz, the Court didn't even mention any other Federal Circuit cases dealing with "each", and chose instead to focus on "comprising" and "broadest reasonable interpretation."