Monday, June 7, 2010

Federal Circuit on "broadest reasonable" construction

Takeaway: In the recent decision In re Suitco Surface (2009-14, Fed. Cir. 2010), the Federal Circuit found the BPAI's claim construction of a floor "finishing layer" to be unreasonably broad. The BPAI relied on the transitional word "comprising" to find that "finishing layer" read on any layer above the floor that was suitable for placement on the top layer, regardless of whether it was the top or final layer. The court smacked down the BPAI with this:
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.
Details: I'll focus only on the claim construction of "material for finishing." Full details of the case can be found here on the 37 Thoughts blog.

The claim at issue was:
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 ... 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 BPAI interpreted "material for finishing" as "a material that is structurally suitable for placement on the top surface of a floor." The BPAI also relied on the transitional phrase "comprising" to allow "the finishing material to fall anywhere above the surface being finished regardless of whether it actually ‘finishes’ the surface."

The court disagreed and found that the "material for finishing" is the "layer on the top surface of a floor that is the final treatment or coating of a surface," explaining that:
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 court remanded to the BPAI for a new invalidity analysis with the proper claim construction.

My two cents: I see the holding of In re Suitco as: while "comprising" allows additional elements, it does not allow for the presence of additional that overrule an explicit limitation. In Suitco, additional layers on top of the finishing material were not allowed because such layers would overrule the "material for finishing" limitation.

The BPAI has twice used In re Suitco in precisely this manner to reject an Examiner's interpretation that included elements excluded by the claim. Ex parte Henninge involved a lithium battery, with the claim limitation at issue being "wherein the separator-electrode unit comprises an inorganic separator unit." The Examiner argued that because "comprising" was used as the transitional phrase, the separator-electrode unit could include organic ingredients. The BPAI rejected this interpretation because the claim contained an explicit requirement that the separator is inorganic.

Ex parte Wu was a chemical case, where the claim limitation at issue was “one or more carbon black fillers, wherein said fillers are the only fillers in the organosilane masterbatch.” The Examiner used a reference which taught silica (not carbon black) fillers, and argued that this met the claimed limitations because "the term 'comprising' permits inclusion of the additional ingredients not recited in the claims." The Board rejected this interpretation, finding that "['comprising'] does not permit the presence of those fillers, including silica fillers, which are specifically excluded by the explicit language of the claims."

5 comments:

  1. I pose the following question to the CAFC:

    When a patent comes in next tues that states that it claims:

    A finishing layer comprising:
    a top layer
    and a bottom layer.

    What then?

    In view of the obvious overreach of their "logiclol" pertaining to a finishing layer having to be the very last layer, I believe that their rational for deciding this case was wrong.

    However, if one bothers to read the case, the claim actually recites "improved material for finishing the top surface of the floor,"

    That is far from "finishing layer".

    Never the less, the "for ..." is indicating a mere intended use. The claim itself is claiming the floor with an improved layer that can be used for that intended purpose. I imagine that there is a very good chance that the claim was actually anticipated, though the PTO didn't explain why very well.

    Besides, during the construction of the floor wouldn't that layer have been on the top at some point? Hmmm, think about that one for a moment.

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  2. >the "for ..." is indicating a mere intended use.

    The Fed Cir didn't explicitly discuss the question of intended use, so I didn't discuss it in my post. It is an interesting question, though.

    The Board did consider the issue, and found "material for finishing" in the preamble to be structure limiting the claim. The BPAI then found that the meaning of "material for finishing" was a material “structurally suitable for placement on the top surface of the floor".

    As noted in my post, the Fed Cir disagreed with the Board on this point, and interpreted "material for finishing" as a "layer on the top surface of a floor that is the final treatment or coating of a surface".

    I definitey think the case would come out the other way if "for finishing" was ignored as intended use.

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  3. >However, if one bothers to read the case, the >claim actually recites "improved material for
    >finishing the top surface of the floor,"
    >That is far from "finishing layer".

    You're right that I misquoted the claim language. But I don't think I'm far off.

    As noted in my post, the Fed Cir interpreted "material for finishing" as a "layer on the top surface of a floor that is the final treatment or coating of a surface".

    Thus, while the phrase "finishing layer" doesn't appear in the claims, that's how I read the Fed Cir's construction.

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  4. >A finishing layer comprising:
    >a top layer
    >and a bottom layer.
    >What then?

    I think yours is a more interesting question than the one in Suitco. (Suitco focused on "finishing" rather than "top", and only brought in "top" as the meaning of "finishing".)

    >during the construction of the floor
    >wouldn't that layer have been on the top
    >at some point?

    I'll agree that as a multi-layered material is constructed, different layers appear on top.

    This isn't a method claim, though. So I say we view "top" as "top in the finished product".

    Is it your position that "A top layer" in claim language doesn't mean what we mean in plain English when when say "THE top layer"? How can I claim "top layer" to mean what it means in plain English?

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  5. "How can I claim "top layer" to mean what it means in plain English?"

    Ahh, but as the product is being formed the "finished product" is the product as it stands at whatever point of construction we're at.

    "How can I claim "top layer" to mean what it means in plain English?"

    There are a variety of ways, each with different effects to have it mean similar. To fully have it mean what you mean by "what it means in plain english" may be impossible in claim language without referring to the structure's bottom layers, or at least it having some bottom layers, in at least in some broad sense. But then again, it may not. I'm not in the mood to fiddle with something as complex as that atm. You're talking about doing something I usually get paid to do and I don't feel like giving a freebie atm. Especially in view of the fact that usually you probably wouldn't want to go so far as to have it mean that, when other, simpler, ways of designating it to be on top should usually suffice to get around the prior art and thus you need no more.

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