Federal Circuit Finds PTO's Claim Construction Unreasonably Broad

In re Suitco Surface, Inc. (Fed. Cir. Apr. 14, 2010)

In this case, the Federal Circuit reversed the PTO's construction of a claim term during reexamination of a patent as unreasonably broad, stating "[t]he 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."

The patent at issue related to a floor finishing material for use on athletic courts, bowling lanes, and other floor surfaces made of wood, linoleum, terrazzo, or concrete.  As described by the Federal Circuit, "[t]he invention is essentially a thin plastic sheet placed over a floor surface connected by an adhesive layer."  During reexamination of the patent, the PTO and BPAI construed the claim term "material for finishing the top surface of the floor" as "requiring a material that is structurally suitable for placement on the top surface of a floor."  Using this construction, the PTO and BPAI found that 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 BPAI affirmed the PTO's rejection of the claims at issue.

The Federal Circuit, in an opinion by Judge Rader, disagreed with the PTO and BPAI, stating 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." (emphasis in original).  The Court went on to explain that "[i]f 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."

While noting that the PTO is required to give claims their "broadest reasonable construction", the Court also pointed out that "claims should always be read in light of the specification and teachings of the underlying patent" and the broadest reasonable construction rule does not give the PTO "an unfettered license to intepret claims to embrace anything remotely related to the claimed invention."

The Court concluded its analysis by determining that the broadest reasonable construction of "material for finishing the top surface of the floor" is "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." (empahsis in original).  The Court therefore vacated and remanded for findings consistent with that claim construction.