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Fed. Cir. Nixes USPTO Claim Construction for Not Contruing Claim Term "Consistent With the Specification."

By Peter Zura

In Re Suitco Surface, Inc., No. 09-1418 (April 14, 2010)

One of the issues in this case was the interpretation of a claim directed to ?floor finishing material? for use on athletic courts, bowling lanes, and other floor surfaces made of wood, linoleum, terrazzo, or concrete.  One claim recited "on a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising . . ."

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 Federal Circuit started its claim construction by noting that

The express language of the claims requires a ?material for finishing the top surface of the floor.? . . . 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.

Going further:

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,? . . . 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.?

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 . . . The PTO?s proffered construction therefore fails.

VACATED-IN-PART, AFFIRMED-IN-PART, AND REMANDED
 
Read/download the opinion here (link)

Full post as published by Two-Seventy-One Patent Blog on April 14, 2010 (boomark / email).