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Broad Claim Construction Was Supported by Expansive Definition Given in the Specification

January 30, 2006

Decision icon Decision

Last Month at the Federal Circuit - February 2006

Judges: Michel, Newman (author), Bryson

In In re Scott E. Johnston, No. 05-1321 (Fed. Cir. Jan. 30, 2006), the Federal Circuit affirmed the decision of the Board, which affirmed the Examiner’s rejection of all claims of U.S. Patent Application No. 09/312,992 (“the ’992 application”) as anticipated or obvious.

The claims of the ’992 application are directed toward a large diameter spiral pipe, in excess of 15 feet (independent claim 1) or in excess of 144 inches (independent claims 5 and 9) comprising an elongated strip of ductile material formed into jointed, adjacent helical convolutions. The Board rejected the claims as anticipated in view of three patents describing silos, storage tanks, and other cylindrical structures formed from strips of metal bent into a helical shape and joined at the edges.

In addition to the three patents, the Examiner had also cited two nonpatent references: (1) a brochure for a manufacturing system, wherein spirally formed tubes of corrugated metal, up to 15 feet in diameter, are described for use in storm sewers, drainage tubes, and culverts; and (2) a “Handbook of Steel” that taught spirally formed steel pipes, in diameters of 24 feet or more, and arches for use in culverts, storm sewers, subdrains, spillways, underpasses, and service tunnels, wherein the pipe is shown deformed into elliptical shapes and arches.

In reaching its decision, the Board adopted the dictionary definition of “pipe” as a tubular or cylindrical object, part, or passage, and thus held that large cylindrical structures, such as storage tanks and silos, met this definition of pipe within the meaning and scope of the claims. Johnston challenged the Board’s use of the dictionary definition as unduly broad. In particular, he asserted that persons with skill in the art would not have considered the prior art structures as included in the meaning of “pipe,” but rather to mean structures used to carry fluids or as electrical conduits.

The Federal Circuit affirmed, stating that “[i]t is well established that dictionary definitions must give way to the meaning imparted by the specification,” citing Phillips v. AWH Industries, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Slip op. at 3. However, the specification of the ’992 application did not help Johnston’s argument as, rather than attempting to disclaim such broad scope from its claims, it actually states that pipes may be used as overpasses, storage buildings, homes, silos, and water tanks. Thus, there was no error in considering the patents that describe silos and storage tanks.

The Board further observed that the claims were not limited by the method of forming or shaping the spiral pipe. Accordingly, the Federal Circuit agreed with the decision that claims 1, 2, and 4 were anticipated by the cited patents.

Claim 3, which depends from claims 1 and 2, is limited by additional optional elements: “further including that said wall may be smooth, corrugated, or profiled with increased dimensional proportions as pipe size is increased.” The Board ruled, and the Federal Circuit affirmed, that those limitations did not narrow the scope of the claim because the limitations were permissive.

Claims 5 through 9 were agreed to stand or fall together, and the Board found that the subject matter of claim 9 would have been obvious based on the two nonpatent references cited by the Examiner. In particular, the Board found motivation to combine the teachings of the two nonpatent references in that both deal with the same field of technology and both show spirally formed pipe of large diameter. Johnston argued that there was inadequate motivation to combine the two references, specifically, because one reference teaches only spirally formed, arched-steel pipe less than 12 feet in diameter and arched-steel pipe of over 25 feet in diameter, while the other reference discloses only round, spirally formed pipe.

The Federal Circuit agreed with the Board that the references are in the same field of endeavor and deal with related subject matter, and thus affirmed that it would have been obvious to combine the teachings of the two references to render obvious claim 9 of the ’992 application.