By Kevin E. Noonan —

It is a bedrock principle of patent practice that
the U.S. Patent and Trademark Office gives the terms of claims under examination
their broadest reasonable construction.  The rationale is that, in this way, the applicant has the opportunity to
argue or amend the claims to be as broad as the prior art permits, and
precludes the applicant from expanding beyond these limits the scope of granted
claims it asserts against accused infringers.  Regardless of the soundness of this practice as a policy
matter, as applied by the Office it can (and frequently does) exceed the
boundaries of reasonableness:  the
Office frequently takes a position regarding the scope of a claim term that is
completely unreasonable.  As one
example, the Office has, on occasion, determined that essentially any nucleic
acid can hybridize with any other, since the complexity of almost any sequence
contains short stretches of sequence found in many other sequences; such
reasoning is then applied to reject any claim depending on specific
hybridization.

The practice of construing claim terms unreasonably
arose in an opinion handed down from the Federal Circuit today, In re Suitco Surface, Inc.  Patentees appealed final rejection in
an ex parte reexamination based on
anticipation.  The Federal Circuit, in an
opinion by Judge Rader joined by Judges Prost and Moore, vacated and remanded
the Office's grounds of rejection based, in part, on the unreasonable
construction of claim terms that expanded their scope to encompass the prior
art.

Reexamination was on U.S. Patent No. 4,994,514, which
claimed a "floor finishing material" used on "floor surfaces
[made] of wood, linoleum, terrazzo, [or] concrete," particularly as used
on bowling lanes and athletic courts.  Representative claim 4 is in Jepson claim format (with emphasis added):

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
of clear plastic material having a thickness between about one mil and about
twenty-five mils 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 opinion notes that the underlined claim terms
had been construed during a prior litigation:  "material for finishing" to mean "a material
that makes more durable the underlying surface of the floor, and is applied for
that purpose," and "uniform flexible film" to mean "the
material must be of a uniform thickness, and excludes material in which there
are any variations in thickness."  The Federal Circuit in an appeal from grant of summary judgment against
the patentee, disagreed, saying:

The text of claim 4 leaves little
ambiguity as to the meaning of "material" – namely, at least one
elongated sheet of a uniform flexible film of clear plastic having a thickness
between about one and about twenty-five mils.  What remains in dispute is the
precise meaning of the phrase "for finishing."  In the context of
claim 4, "finishing" clearly refers to providing a clear, uniform
layer on the top surface of a floor.  Significantly, there is no indication in
claim 4 as to what level of durability, if any, the "finish" layer
must have.  Thus, claim 4 implies a broad meaning for the term "finishing,"
which is consistent with the dictionary definition of "finish."  See,
e.g., Webster's Ninth New Collegiate Dictionary 464 (1984) (defining "finish"
as "the final treatment or coating of a surface," but not identifying
any specific properties).

The District Court granted summary judgment a second time on remand, based on the "uniform
flexible film" limitation.  The Federal Circuit again disagreed, based on whether the accused
infringing article was required to have a uniform thickness throughout.  During the second remand, the defendant
3M (an amicus here) filed the ex parte
reexamination request which resulted in a stay of the remand litigation and,
ultimately, this appeal.  Claims
4-8 were finally rejected as being anticipated by U.S. Patent No. 3,785,102 to
Amos and U.S. Patent No. 4,543,765 to Barrett, these rejections being the
subject matter of this appeal.  (A
third rejection, based on U.S. Patent No. 4,328,274 to Tarbutton was not
appealed.)

Briefly, the
Amos reference teaches "a floor covering pad comprising a plurality of
plastic sheets connected together by a plurality of adhesive layers . . .
designed to be used right before entry into a clean room or a hospital bay to
remove dirt from the shoes or wheels of incoming traffic."  Each of the plurality of sheets is
exposed one at a time and allowed to function to remove dirt until the adhesive
on the sheet is filled, and then the sheet is removed and the next sheet is
exposed and so forth.  The Barrett
reference teaches "the use of a clear plastic film connected to a floor
with an adhesive layer" to "temporarily protect a floor during
construction."

During the
reexamination, the examiner asserted rejections based on anticipation by these
references, and the Board affirmed.  The Board construed the two relevant claim terms more broadly that the District Court:  the term "material
for finishing the top surface of a floor" was construed to mean "requiring
a material that is structurally suitable for placement on the top surface of a
floor."  Thus, any layer
placed above a floor fulfilled this requirement, "regardless of whether it
was the top or final layer."  The term "uniform flexible film" was construed by the Board to
mean "including, for example, a flexible film having the same thickness
throughout, as well as a flexible film having the same textured surface
throughout."  Suitco
challenged the Board's decision affirming the asserted rejections based on
these constructions, particularly asserting that none of the prior art cited
the "uniform" limitation.

The Federal Circuit's opinion acknowledged the
practice before the Office that claim terms are to be given "their
broadest reasonable construction consistent with the specification,"
citing In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007), saying that its inquiry was
thus whether the Board's construction was "reasonable," citing In re Morris, 127 F.3d 1048, 1055 (Fed.
Cir. 1997).  Applying these
principles, the Court directly held that the Office's construction of the term "material
for finishing" was unreasonable:

The express language of the claims requires a "material for finishing
the top surface of the floor."  '514 patent col.7 ll.67-68 (emphases
added).  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 PTO's proffered construction ignores this reality by allowing the
finishing material to fall anywhere above the surface being finished regardless
of whether it actually "finishes" the surface.  Indeed, according to
the PTO, the finishing surface need only be "structurally suitable
for placement on the top surface of the floor" — i.e., several layers can be
placed on top of the "finishing" layer.  If the PTO's construction
were accepted, a prior art reference with carpet on top of wood, on top of
tile, on top of concrete, on top of a thin adhesive plastic sheet anticipates
the claims in question because an adhesive plastic sheet falls at some point in
the chain of layers.  This construction does not reasonably reflect the plain
language and disclosure of the '514 patent.

The problem,
according to the Court, is that the Office has ignored the part of the standard
that limits the bounds of what is "reasonable" to what is consistent
with the specification:  the rubric
is not merely that claims must be given "their broadest
reasonable construction" but that they be given "their broadest
reasonable construction consistent with the specification" (emphasis
added).  Moreover, claims
are to be read "in light of the specification as it would be interpreted
by one of ordinary skill in the art," citing In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).

The opinion particularly rejects the Office's
reliance upon and justification of its construction because the patentee used
the term "comprising" in the claim.  "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,"
according to the opinion.  Citing Schriber-Schroth
Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (perhaps on the panel's
mind after its extensive citation in the en banc Ariad v. Eli Lilly appeal), the Court held that the Office must
always construe claims "in light of the specification and the teachings of
the underlying patent."  Here, both the "express language of the claim
and the specification" mitigated against the Office's construction, and "require
the finishing material to be the top and final layer on the surface being
finished."

This opinion certainly provides ammunition for
applicants facing unreasonable interpretations of claim terms during
prosecution.  It will be
interesting to see whether the Office adopts the Federal Circuit's restrictions on
unfettered claim interpretation, or continues with its occasional flights of
fancy in construing claim terms during prosecution.

In re Suitco Surface, Inc. (Fed. Cir. 2010)
Panel:  Circuit Judges Rader, Prost, and Moore
Opinion by Circuit Judge Rader