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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Affirms Examiner's Broadest Reasonable Construction

In re SP Controls, Inc. (Fed. Cir. Dec. 21, 2011) (nonprecedential)

In this case, the Federal Circuit affirmed a patent examiner's broadest reasonable constructions of two claim terms in an ex parte reexamination regarding a patent directed to an apparatus for controlling the input to another device.

The Examiner had construed the claim limitation "a frame to which the control circuitry and keys are mounted, wherein the frame has slots extending through said frame for receiving labels" as not requiring a frame with separate slots for labels and keys.  The Examiner had construed the claim limitation "labels mounted over the slots" as covering structure in which a label covers a key "under a transparent cover of the key top, with the key mounted through the slot, thereby placing the label 'over the slot.'"

On appeal, the assignee argued that both constructions were unreasonably broad but conceded that if the Examiner's constructions stood, the prior art references at issues would render the claims obvious.  Pointing to the specification, the assignee argued that the specification uniformly showed labels and keys occupying separate slots, therefore the claimed slots were to be used for receiving labels only.  and a label mounted over the slot, i.e. mounted so as to cover a slot, could not do so if the slot also had a key extending from it.

The Federal Circuit found that nothing in the claims "limits their reach to a frame in which labels and keys are in separate slots ... claim 1's open-ended 'comprising' language on its faces does not bar other elements, (i.e., keys) from being placed in the slots."  Turning to the specification, the Federal Circuit found that "[w]hile it is true that the embodiments described in the '794 patent's specification all disclose structure in which keys and labels are in separate slots ... there is no language in the specification affirmatively limiting the claims to such embodiments ... [t]his is significant, for the law is clear that, absent such language in the specification, the claims are not limited to preferred embodiments ... [t]his is particularly so where, as here, the claims are to be given their broadest reasonable construction."

The Court therefore affirmed the Examiner's rejection of claims.