The U.S. Court of Appeals for the Federal Circuit reversed the Board of Patent Appeals and Interferences (BPAI) decision, rejecting claims of Wheeler’s patent application as being anticipated under 35 U.S.C. § 102. In re Wheeler, Case No. 08-1215, (Fed. Cir., Dec. 19, 2008) (Newman, J.).
Wheeler’s patent application covers a fishing pole having an illuminated transparent rod. Claim 1 recites, in pertinent part, “an illuminated fishing pole that includes an elongated hollow fishing rod having a free end and a fixed end, said elongated fishing pole being made from a transparent, flexible material.” The BPAI construed claim 1 to only require a portion of the pole to be illuminated. Therefore, BPAI held that claim 1 is anticipated by U.S. Patent Number 5,644,864 (Kelly), which also discloses a fishing pole having a portion thereof illuminated. Wheeler disagreed arguing that claim 1 cannot be anticipated by Kelly because claim 1 requires that the entire fishing pole be illuminated and Kelly discloses illuminating only a portion of the fishing pole.
The Federal Circuit, reviewing BPAI claim construction de novo, agreed with Wheeler. The Federal Circuit held that “[a]lthough the claims during examination are given broadest reasonable interpretation in order to facilitate precision in claiming, that interpretation must be consistent with the specification, and claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” To this end, the Federal Circuit noted that Wheeler’s specification and claim 1 state that the entire rod is transparent and flexible and illuminated. Accordingly, the Federal Circuit held that Kelly cannot anticipate claim 1 because Kelly only discloses a fishing pole with a portion thereof illuminated.