Scott Daniels | April 30, 2010

It is well-known that the PTO gives claims their broadest reasonable construction consistent with the specification, both in original examination and in reexamination.

But in the recent case In re Suitco Surface, the CAFC found that the PTO’s claim construction had been too broad.  The claimed invention was a floor covering, including a “material for finishing the top surface of the floor.”  The PTO Board of Appeals construed the limitation to require “a material that is structurally suitable for placement on the top surface of a floor” (emphasis added).  Based on this construction that the material need only be “suitable” for finishing the floor surface, the Board found that the claim was anticipated by each of two prior art references.

The CAFC found that the Board’s construction was contradicted by the plain wording of the claim and the specification: “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.”  Rather than being merely “suitable” for finishing, the material must actually finish the floor surface, i.e., it must be the final layer.  The case now goes back to the PTO for further consideration.

The patentee must be pleased to have won the appeal, but also distressed that the reexamination proceeding is not concluded – the patent is the subject of a District Court infringement action that has been stayed pending completion of this reexamination.  The request for this reexamination was filed in April 2004.  The District Court case was filed in 1996.

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