« Comprised of Counterfeit | Main | Past Time »

September 27, 2007

Fiction Writers

Reeking of nasty anti-patent bias, evidence of high-level incompetence at the USPTO trickles in. Today, the appeals court caught the patent appeals board (BPAI) equating "flexible" with "rigid."

In Re David Buszard et al. (CAFC 2006-1489)

David Buszard had a flame retardant patent application (10/429,429) that claims a chemically derived flexible polyurethane foam. The claims were rejected under § 102 by prior art (Eling) that crushed rigid foam to make it flexible.

"A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference." In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) ("Invalidity on the ground of 'anticipation' requires lack of novelty of the invention as claimed. . . . that is, all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.").

Buszard argued that Eling was chemically different.

The PTO states that Buszard's claims, when given their broadest interpretation, read on the Eling product and thus are anticipated by Eling. Buszard states that this interpretation is devoid of support, even when viewed in accordance with the protocols of patent examination. During examination, the patent application claims may be given their broadest interpretation consistent with the specification, in order to facilitate sharpening and clarifying the claims at the application stage. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) ("The PTO broadly interprets claims during examination of a patent application since the applicant may 'amend his claims to obtain protection commensurate with his actual contribution to the art.'") (citation omitted). Thus the patent examiner and the applicant, in the give and take of rejection and response, work toward defining the metes and bounds of the invention to be patented. See In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (the broadest reasonable construction of claims during examination serves to target ambiguities in claims at the time when the claims are readily amended). As explained in Zletz: "An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process." Id. at 322. Buszard argues that the Board's construction of the claims to read on and thus be anticipated by Eling's crushed solid foam is not reasonable.

The codeword for CAFC take on USPTO position: "beneath contempt."

The Solicitor proposed at oral argument that when a rigid foam is mechanically crushed, the chemical bonds are broken and the product is the same as the flexible product of a flexible foam reaction mixture. There was no rejection on this ground, there is no evidence or argument to this effect in the record, this theory was not mentioned by any examiner or in the Board's opinion, and it appears to be contrary to science. This theory was proposed without support or citation, and without opportunity for Buszard to refute it. It is not sufficiently creditable to warrant further consideration.

Prost, in dissent, skates with "there is no need for the Board (or this court) to engage in a complicated, in-depth claim construction analysis during patent prosecution."

If a claim term is ambiguous or confusing, the applicant can (and should) clarify it. Or, if an applicant wants a claim term to have a specific meaning, the applicant can either amend the claim to expressly convey the applicant’s intended meaning or provide an express definition for the claim term in the specification. See Yamamoto, 740 F.2d at 1571-72 (noting that an applicant can overcome a rejection by amending the claim language); Morris, 127 F.3d at 1054 (noting that the PTO must take into account definitions contained in the specification when interpreting claim language).

Accordingly, if the PTO rejects a claim because a broad construction renders the claim invalid as anticipated, the applicant can, for example, amend the claim to narrow its scope and, thus, overcome the rejection. In this way, interpreting claim language broadly during prosecution “serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified.” Yamamoto, 740 F.2d at 1571; see also id. (“The PTO broadly interprets claims during examination of a patent application since the applicant may ‘amend his claims to obtain protection commensurate with his actual contribution to the art.’”).

Prost then falls hard.

In this case, the only disputed issue is whether the Eling reference discloses a “flexible polyurethane foam reaction mixture” as required by Buszard’s pending claims. The Board construed this term to include “any reaction mixture which produces, at least ultimately, a flexible polyurethane foam.” In re Buszard, No. 2006-1120, 2006 WL 1665669, at *2 (Bd. Pat. App. & Int. Apr. 20, 2006). This construction encompasses mixtures that produce polyurethane foams that are made flexible upon crushing, such as the mixture disclosed in the Eling reference.

Earth to Prost: it doesn't take a crash-course from Professor Chemistry to know that crushing is not any possible part of "a [chemical] reaction mixture."


Yesterday, Dennis Crouch covered Takeda v. Dudas, where a BPAI double-patenting rejection was tossed by the D.C. district court. The patent appeals board had downed Takeda's continuation even though the new claims were not obvious variants of the original claims. On appeal, the district court rendered the BPAI ruling careless tosh.

Posted by Patent Hawk at September 27, 2007 1:03 PM | Prosecution


Of course the decision makes sense, it was authored by J. Newman. It helps that the Solicitor is arrogant and has virtually no real patent experience - that way passing the red face test on science is easy.

Posted by: Joyce at September 27, 2007 3:02 PM

J. Newman - chemist, former patent attorney.

J. Prost - carried Orrin Hatch's jacket.

No contest.

Posted by: Pete at September 28, 2007 6:16 AM

Never mind how the Board construed "flexible foam", aren't all PU foam reaction mixtures "flexible", even those of Eling? If one arranges the claim in the EPO "characterized by" form, relative to Eling, isn't "flexible" the ONLY thing that gives the claim novelty over Eling? Isn't the core purpose of a claim to draw a bright line between what's in and what's outside the claim? Where's the unambiguous line between "flexible" and what's not flexible? Isn't this claim hopelessly ambiguous and unclear and indefinite? CAFC wrong again, no?

Posted by: MaxDrei at September 30, 2007 12:51 AM

I should have included in the comment above that, as a matter of plain English, the adjective "flexible" qualifies the noun "mixture", just like "foam" and "reaction". All specify what sort of "mixture" the claim is announcing. I don't see the reason for the Board and the CAFC to hold that "flexible" unambiguously qualifies the noun "foam".

Posted by: MaxDrei at September 30, 2007 1:03 AM