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CAFC affirms ED Tx in PureChoice v. Honeywell

By Lawrence B. Ebert, Esq.

On the 112 P 2 question, the CAFC cited the Exxon case:

A claim satisfies the definiteness requirement ?[i]f one skilled in the art would understand the bounds of the claim when read in light of the specification.? Exxon Research & Eng?g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A claim will be found indefinite only if it ?is insolubly ambiguous, and no narrowing construction can properly be adopted.? Id.

Sloppy patent prosecution enters into the picture:

During reexamination, the term was split into a ?sensor for
measuring environmental air quality data? and ?air quality sensor adapted to measure
non-weather data.? Because PureChoice did not reduce the interviews that resulted in the amended claim terms to writing pursuant to 37 C.F.R § 1.560(b), and because
neither ?environmental air quality? nor ?non-weather data? appears in the written
description, the court is left without a record to explain the difference or relationship between the two terms that provoked allowance. Applying the construction of air quality to the terms, the first becomes a sensor for measuring a concentration of environmental pollutants or contaminants in the air, but not meteorological data, while the second becomes a sensor for measuring a concentration of pollutants or contaminants, but not meteorological data, adapted to measure non-weather data. Not only are these two terms identical in meaning, but they are insolubly ambiguous. An air quality attribute cannot simultaneously be environmental, understood during prosecution as including weather attributes such as temperature and humidity, yet limited to non-meteorological attributes.

The problem:

Because the claim clearly requires at least one of each type of
environmental air quality sensors and non-weather air quality sensors, the particle
sensor and the volatile organic compound sensor must be of different types. However,
the specification does not describe which sensor is which.

The bottom line:

Accordingly, the judgment of the United States District Court for the Eastern
District of Texas is affirmed.

PureChoice loses.

Full post as published by IPBiz on June 03, 2009 (boomark / email).