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April 14, 2010


The rampaging incompetence of the USPTO is dammed only by appeal to the courts. Time and again, the PTO's "broadest reasonable interpretation" of claims is hell and gone from reasonable. Case in point: 4,944,514, owned by Suitco Surface, which got a hard buffeting from the patent board in reexam, but reprieve from the CAFC.

In re Suitco Surface (CAFC 2009-1418) precedential

The '514 patent claims a "floor finishing material" for use on athletic courts, bowling lanes, and other "floor surfaces [made] of wood, linoleum, terrazzo, [or] concrete." '514 patent, abstract. The invention is essentially a thin plastic sheet placed over a floor surface connected by an adhesive layer.

'514 has been in court action, asserted against 3M, and had made two previous trips to the CAFC. In other words, the claims of '514 had been well seen.

On the second remand, the Illinois District Court transferred the case to the Southern District of Iowa. At that point, 3M filed an ex parte reexamination request with the PTO in 2004. The request cited three prior art references not previously reviewed: U.S. Patent No. 3,785,102 to Amos, U.S. Patent No. 4,543,765 to Barrett, and U.S. Patent No. 4,328,274 to Tarbutton. The district court stayed the case after the request for reexamination was granted. The examiner then rejected claims 4-8 as anticipated by Amos, claims 4 and 6-8 as anticipated by Tarbutton, and claims 4 and 5 as anticipated by Barrett. Only Amos and Barrett are at issue in this appeal.

Amos teaches a floor-covering pad comprised of a plurality of plastic sheets connected together by a plurality of adhesive layers. It is designed to be used right before entry into a clean room or a hospital bay to remove any dirt from the shoes or wheels of incoming traffic.

Barrett teaches the use of a clear plastic film connected to a floor with an adhesive layer. Barrett's cover sheet temporarily protects a floor during construction. The sheet is supposed to be removed whenever the building or room opens.

From the Board to the courthouse steps -

In its rejection, the Board construed the term "material for finishing the top surface of the floor" to mean "requiring a material that is structurally suitable for placement on the top surface of a floor." Under that construction, according to the Board, the "material for finishing the top surface of the floor" could be any layer above the floor regardless of whether it was the top or final layer. The Board also construed the term "uniform flexible film" 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 timely appealed to this court challenging the Board's construction for the "material for finishing the top surface of the floor" and contending that no cited prior art reference taught the "uniform" limitation.

The Forrest Gump test of reasonableness -

"During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). This Court thus reviews the PTO's interpretation of disputed claim language to determine whether it is "reasonable." In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).

Anticipation is a question of fact reviewed for substantial evidence. In re Baxter Travenol Labs, 952 F.2d 388, 390 (Fed. Cir. 1991). "Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence," In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000), and "means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion," Consol. Edison Co. v. Nat'l Labor Relations Bd., 305 U.S. 197, 229 (1938).

"finishing the top surface of the floor" shouldn't be hard to fathom. But English is a second language at the USPTO. And clarity of thought  simply seems beyond their ken. Alas, stubborn is something the PTO has down cold. Stupid bureaucrats are like that.

[E]ven under the broadest-construction rubric, the PTO's construction is 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.

Although the PTO emphasizes that it was required to give all "claims their broadest reasonable construction" particularly with respect to claim 4's use of the open-ended term "comprising," see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) ("the open-ended term comprising . . . means that the named elements are essential, but other elements may be added"), this court has instructed that any such construction be "consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)) (emphasis added).

The PTO's construction here, though certainly broad, is unreasonably broad. 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. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) ("The claims of a patent are always to be read or interpreted in light of its specifications."). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer on the surface being finished. See, e.g., '514 patent, col.1 ll.15-20 ("The present invention is directed generally to a material and method for quickly and easily producing a transparent wear resistant finish on a smooth flat surface subject to wear and more particularly to a material and method for finishing a floor . . . ."). The PTO's proffered construction therefore fails.

When read in the appropriate context of the claim language and specification, the broadest reasonable construction is clear: the phrase "material for finishing the top surface of the floor" refers to a clear, uniform layer on the top surface of a floor that is the final treatment or coating of a surface. It is not any intermediate, temporary, or transitional layer. Because the PTO based its rejection on its unreasonable construction, this court remands with instructions to conduct a new invalidity analysis using the appropriate construction.

As to "uniform", Suitco's self-serving arguments served it not.

Turning to the "uniform flexible film" limitation, Suitco does not challenge the Board's construction of the term to include "for example, a flexible film having the same thickness throughout, as well as a flexible film having the same textured surface throughout." That construction only requires the finishing material to be the same thickness or the same material. Suitco instead contends that neither Amos nor Barrett discloses a "uniform flexible film."

But while Amos and Barrett do not expressly use the word "uniform," each certainly discloses the claim element in question. Amos teaches the use of "very thin" plastic sheets "being from .002 to .003 inch[es] in thickness." U.S. Patent No. 3,785,102 col.4 l.13. Despite Suitco's strained suggestion that the disclosure teaches a "thickness variation of 50%," a more reasonable interpretation is that the plastic sheets can be anywhere between 2 or 3 mils--not that there is any thickness variation therein. To that end, Amos discusses a preferred embodiment where the bottom plastic sheet is 4 mils without reference to any thickness variation. Id. at col.4 ll.37-41. Similarly, Barrett teaches that a "four mil low density polyethylene film can be used." U.S. Patent No. 4,543,765 col.6 ll.7-8. Substantial evidence therefore supports the Board's findings.

The wrap-up -

For the above-stated reasons, this court vacates-in-part, affirms-in-part, and remands. The PTO's construction of "material for finishing the top surface of the floor" is unreasonable in light of the express claim language and specification. Substantial evidence, however, supports the PTO's finding with respect to the "uniform" limitation.

That the patent office insists upon its rightness is uniform. That the patent office gets something right is a random act.

Those who would protest my harshness upon the USPTO do so only in ignorance or under their employ. Any seasoned prosecutor knows countless examples of examiner idiocy.

The best examiners are those who are willing to be educated. They are too few.

Posted by Patent Hawk at April 14, 2010 9:57 AM | Prior Art


"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."

Amos '102: "A throw-away pad, especially for use at the entrance to a clean area but not exclusively for such use. Of multiple ply construction, it comprises a plurality of very thin poly-ethylene or polypropylene sheets, of suitable surface size and shape to receive at least a pair of shod feet. Each sheet bears a very thin coating of pressure-sensitive adhesive on its top surface. The bottom surface of the pad, that is, the bottom of the lowermost sheet thereof, also is coated with adhesive so that the pad, when in use, is removably adhered to the floor. The pressure-sensitive adhesive has a low modulus of elasticity, a high internal viscosity and high surface free energy, so that it firmly and aggressively grabs dirt from shoes of wheels passing over it, yet each sheet can be readily peeled off after use to expose a fresh adhesive surface to further traffic. The entire pad or stack is thin to present no hazard or obstacle to foot or to wheeled vehicles, e.g., to a gurney being wheeled into an operating room."

Sorry Hawk, I fail to see how the material of Amos is not a material for finishing the top surface of a floor, even under the CAFC construction. This remand is a waste of time. I do agree that it is unreasonable to read Barrett on the claim.

By the way, what's up with the lame "if you disagree with me, you're a big stupidhead" closing remark?

Posted by: Ronald at April 14, 2010 5:35 PM


I'm with you. This is an extremely important case for reigning in rogue applications of the BRI doctrine.

Posted by: EG at April 15, 2010 4:33 AM

This case provides further proof that reexam has primary purpose to harass patentees and waste patent life: Six-years to get a remand from the CAFC back to the same bungling incompetence of the PTO? We are in deep trouble if we are expecting the PTO to protect innovation in this country.

But there is a take away in this case: Judges and parties should not stay concurrent litigation pending the outcome of reexamination proceedings. Any district court judge would have had this case decided *correctly* in half the time.

Posted by: Mike at April 15, 2010 1:40 PM

"Six-years to get a remand from the CAFC back to the same bungling incompetence of the PTO?"

That's what's really troubling here. It's very clear that the examiners who handled this reexam, who are supposed to be the cream of the crop as they are in the CRU, are beyond incompetent. Sending the application back to them is like going back to the surgeon who botched your first operation.

If the examiners in the CRU and the APJ's of the BPAI are supposed to be the best and the brightest the PTO has, might as well send them all home today and put in a registration system.

Posted by: pong at April 16, 2010 11:35 AM

"...and put in a registration system."

I think that's what they want. Unfortunately, doing so penalizes the very people getting screwed today - the inventors.

Posted by: Angry Al at April 16, 2010 1:49 PM