The U.S. Court of Appeals for the Federal Circuit recently determined that the U.S. Patent and Trademark Office’s (USPTO’s) application of the broadest-construction rubric was unreasonable when it failed to consult the teachings of the specification. In re Suitco Surface, Inc., Case No. 09-1418 (Fed Cir., Apr. 14, 2010) (Rader, J.).
Suitco Surfaces (Suitco) owns a patent relating to “‘floor finishing material’ for use on athletic courts, bowling lanes, and other ‘floor surfaces [made] of wood, linoleum, terrazzo, [or] concrete.’” The main thrust of the patent is a thin plastic sheet placed over a floor surface and attached by an adhesive. The patent was subject to ex parte reexamination. On appeal, the Board of Patent Appeals and Interferences (the Board) affirmed the examiner’s rejection of certain claims by construing “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, any layer above the floor would meet the limitation.
Suitco appealed the Board’s decision. The Federal Circuit addressed whether the Board’s construction was unreasonable. The Court noted that “during reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” The claim explicitly requires a material for finishing the top surface of the floor. The Court stated that a material cannot finish any surface unless it is the final layer on that surface. The specification also stated that the invention is directed to “producing a transparent wear resistant finish on a smooth flat surface subject to wear.”
The Court held that the USPTO must always construe claims “in light of the specification and the teachings of the underlying patent. In view of the claim’s express language and the specification’s teaching that the finishing material be the top and final layer on the surface being finished, the Court determined that the Board’s construction was unreasonable. Thus, the Court remanded for a new invalidity analysis in view of the proper construction