Friday, September 4, 2009

In Re Robert Skvorecz

On appeal from a rejection of a reissue application by the PTO board, the court reversed and remanded on several grounds in this opinion. One involved indefiniteness and the court emphasized that this is determined from the perspective of one of skill in the art in the context of the claim and patent while concluding that a limitation did not require further antecedent basis. With regard to written description, the court again relied on how a person of skill in the art would view certain drawings to conclude that the description was adequate.

Another issue was the interpretation of “comprising,” which the court felt the Board had taken too far. The patent required each leg of the device to have an offset and a prior art reference disclosed a device in which some but not all legs had offsets. The Board interpreted the claim “to include wire legs without offsets, because the claim uses the open-ended transition term ‘comprising.’” (p. 7.) The Federal Circuit rejected this reasoning: “The signal ‘comprising’ does not render a claim anticipated by a device that contains less (rather th[a]n more) than what is claimed.” (p. 8.) Therefore, it was incorrect “to interpret ‘comprising’ to mean that not all the Skvorecz wire legs need have offsets, despite the claims that state that ‘each wire leg’ has an offset. (Id.) In this context, the court also discussed the “protocol of giving claims their broadest reasonable interpretation during examination,” noting that it “does not include giving claims a legally incorrect interpretation. This protocol is solely an examination expedient, not a rule of claim construction. Its purpose is to facilitate exploring the metes and bounds to which the applicant may be entitled, and thus to aid in sharpening and clarifying the claims during the application stage, when claims are readily changed.” (Id.)