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Use of the Term “Comprising” Does Not Render a Claim Anticipated by a Device That Contains Less Than What Is Claimed

September 03, 2009

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Last Month at the Federal Circuit - October 2009

Judges: Newman (author), Friedman, Mayer

[Appealed from: Board]

In In re Skvorecz, No. 08-1221 (Fed. Cir. Sept. 3, 2009), the Federal Circuit reversed and remanded the Board’s decision rejecting claims 1-5 and 7 in Robert J. Skvorecz’s application to reissue U.S. Patent No. 5,996,948 (“the ’948 patent”) for anticipation based on U.S. Patent No. 5,503,062 (“the ’062 patent”), indefiniteness, and failure to comply with the written description requirement.

The ’948 patent is directed to a wire chafing stand used for supporting a chafer (i.e., a device for keeping food warm). Specifi cally, the ’948 patent describes a chafing stand wherein the wire legs of the stand are indented so that nested chafing stands can be readily separated. Specifically, the specification describes a stand whereby the legs have an indent (also called an “offset”) located adjacent to the upper ends of the legs, serving to laterally displace each leg relative to the point of attachment of the leg to the upper rim of the stand.

In response to the applicant’s request seeking reissuance of claims 1-7 of the ’948 patent under 35 U.S.C. § 251, the reissue examiner rejected claims 1-5 and 7 as an improper recapture of surrendered subject matter and claims 1, 2, and 5 as anticipated based on the ’062 patent. The Board reversed the rejection based on improper recapture of surrendered subject matter and the anticipation rejection as to claim 5, but sustained the examiner’s anticipation rejection as to claims 1 and 2. The Board also entered two new grounds of rejection, rejecting claim 5 for indefiniteness, and claims 1-5 and 7 for failing to comply with the written description requirement.

On appeal, the Federal Circuit fi rst considered the rejections for anticipation. The Board found that the examiner established a prima facie case of anticipation based on the structural similarity between the ’948 patent and the ’062 patent because the applicant failed to show the claimed invention was not inherently disclosed by the ’062 patent. Skvorecz argued that the claims of his patent require that each wire leg has a laterally displacing offset, while the ’062 patent discloses a wire leg that does not have an offset that laterally displaces the leg from the rim.

The PTO argued that, under their broadest interpretation, the claims could be construed to include wire legs without offsets. Specifically, the PTO argued that the use of the term “comprising” in claim 1 permits the Skvorecz structure to include legs without offsets, even though the claim stated that “said wire legs” and “each wire leg” had offsets. The Federal Circuit disagreed, finding that the term “comprising” “simply means that the device may contain elements in addition to those explicitly mentioned in the claim.” Slip op. at 7-8. The Court noted that the PTO’s protocol giving claims their broadest reasonable interpretation during examination “does not include giving claims a legally incorrect interpretation.” Id. at 8. After warning that the PTO’s protocol is “solely an examination expedient, not a rule of claim construction,” the Court concluded that the “broadest reasonable interpretation” was incorrectly applied to interpret “comprising” to mean that not all the Skvorecz wire legs need to have offsets. Id. In so doing, the Court reminded that the signal “comprising” does not render a claim anticipated by a device that contains less than what is claimed. Accordingly, the Court held that the Board erred in holding that the ’062 patent anticipated the ’948 patent and reversed the Board’s anticipation rejection.

The Federal Circuit next addressed the PTO’s argument that dependent claim 5 was indefi nite because (1) the phrase “at the separation” lacked antecedent basis in independent claim 1; and (2) the indefiniteness of “at the separation” rendered the term “segments” indefinite, especially because “segments” was not defined in the specification. The Court noted that “[s]ome latitude in the manner of expression and the aptness of terms should be permitted even though the claim language is not as precise as the examiner might desire.” Id. at 10 (quoting M.P.E.P. § 2173.02). Thus, the Court found that the phrase “at the separation” did not require further antecedent basis and was not indefinite because a person of ordinary skill in the art would understand the claim in view of the specification. The Court instructed the applicant to adopt the Board’s suggestion of changing “the separation” to “a separation,” and held that, with this amendment, the claim was not indefinite.

Finally, the Court addressed the PTO’s argument that claims 1-5 and 7 did not meet the written description requirement because the claim element “a plurality of offsets located . . . in said first rim” was not described in the specification. Although Figures 12 and 13 showed offsets in the rim, the PTO argued that these were partial figures and did not show every leg’s offset and their displacement. The Court rejected the PTO’s argument, finding that, in view of the other figures showing the full structure, a person of skill in the art would understand Figures 12 and 13 as partial structures showing the detail of the offsets. The Court therefore held that the Board erred in fi nding that the claims failed to meet the written description requirement.

Accordingly, the Federal Circuit reversed the Board’s rejections based on anticipation, indefiniteness, and failure to meet the written description requirement and remanded the case for further proceedings.

Summary authored by Casey L. Dwyer, Esq.