In re Bigio

• Decision Date: 24 August 2004
• Docket Number: No. 03-1358.,03-1358.
• Citation: 381 F.3d 1320
• Parties: In re Alberto Lee BIGIO.
• Court: U.S. Court of Appeals — Federal Circuit

381 F.3d 1320

In re Alberto Lee BIGIO.

No. 03-1358.

United States Court of Appeals, Federal Circuit.

Decided: August 24, 2004.

COPYRIGHT MATERIAL OMITTED

Robert C. Kain, Jr., Fleit, Kain, Gibbons, Gutman, Bongini & Bianco P.L., of Fort Lauderdale, FL, argued for appellant.

Thomas W. Krause, Associate Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the Director of the United States Patent and Trademark Office. With him on the brief were John M. Whealan, Solicitor, and William LaMarca, Associate Solicitor. Of counsel was Cynthia C. Lynch, Associate Solicitor.

Before NEWMAN, RADER, and SCHALL, Circuit Judges.

Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit Judge NEWMAN.

RADER, Circuit Judge.

During prosecution of Alberto Lee Bigio's (Bigio's) patent application Serial No. 09/451,747 (the '747 application), the patent examiner rejected claims 1, 2, and 4-7 as obvious under 35 U.S.C. § 103(a). The United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board) affirmed the examiner's rejections. In re Bigio, No.2002-0967 (Bd. Pat.App. & Interf. Jan. 24, 2003). Because the Board reasonably construed the disputed claim term, this court affirms.

I.

Bigio's patent application claims a hair brush. This claimed hair brush features an allegedly unique shape, namely an hourglass configuration for both the bristle substrate and the overall bristle array. Figure 1 depicts a preferred embodiment of the claimed hair brush:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Bigio stipulates that all of the rejected claims stand or fall with representative claim 1. Claim 1 states:

A hair brush comprising

an elongated member element having handle segment and a bristle substrate segment on a common axial centerline,

said bristle substrate defining an hourglass shape with a core segment having along its longitudinal extent, a smoothly curved progressively radially smaller central region and progressively radially larger end regions,

said bristle substrate carrying a plurality of hair brush bristles,

said hair brush bristles segregated into groups of small bundles disposed over said bristle substrate in a series of axially aligned and radially distributed linear bristle rows,

each bristle bundle in a respective linear row spaced axially apart along said bristle substrate and extending substantially radially with respect to said axial centerline and forming an hourglass shaped hair brush bristle system for said hair.

(phrasing and emphases added).

The examiner rejected claim 1 of Bigio's application as obvious in view of British Patent No. 17,666 (Flemming) in combination with either U.S. Design Patent No. 424,303 (Tobias) or U.S. Design Patent No. 140,438 (Cohen). Flemming, Tobias, and Cohen each claim a particular configuration for a toothbrush. On appeal, the Board rejected Bigio's interpretation of "hair brush" as limited to brushes only for scalp hair. Instead, the Board broadly construed "hair brush" to encompass "not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair)." Bigio, slip op. at 4.

Under this interpretation of the claim term "hair brush," the Board determined that toothbrushes fell within Bigio's field of endeavor and therefore constituted analogous art. The Board affirmed the examiner's rejection based on the Flemming reference alone. Bigio does not dispute that the combination of these three toothbrush references would render his invention obvious but rather disputes that these three toothbrush references constitute analogous art for evaluation of his hair brush invention.

II.

Claim construction is a matter of law that this court reviews without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). During prosecution, however, the PTO gives claims their "broadest reasonable interpretation." In re Hyatt, 211 F.3d 1367, 1372 (Fed.Cir.2000). Accordingly, this court reviews the "reasonableness" of the PTO's disputed claim term interpretations. In re Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997).

This court reviews the ultimate conclusion of obviousness without deference and the factual predicates for that legal conclusion for substantial evidence. In re Gartside, 203 F.3d 1305, 1315 (Fed.Cir.2000). The identification of analogous prior art is a factual question. In re GPAC, 57 F.3d 1573, 1577 (Fed.Cir.1995).

III.

Bigio's challenge to the Board's determination that the toothbrush references are analogous art requires this court to review the Board's construction of the disputed claim term "hair brush." Cf. In re Paulsen, 30 F.3d 1475, 1479 (Fed.Cir.1994) ("[T]o properly compare the [prior art] reference with the claims at issue, [this court] must construe the [disputed] term ... to ascertain its scope and meaning.").

As discussed above, the PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution. Hyatt, 211 F.3d at 1372. The "broadest reasonable interpretation" rule recognizes that "before a patent is granted the claims are readily amended as part of the examination process." Burlington Indus. v. Quigg, 822 F.2d 1581, 1583 (Fed.Cir.1987). Thus, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application. In re Prater, 56 C.C.P.A. 1381, 415 F.2d 1393, 1404-05 (1969). Additionally, the broadest reasonable interpretation rule "serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.Cir.2004) (quoting In re Yamamoto, 740 F.2d 1569, 1571-72 (Fed.Cir.1984)).

In this case, the Board construed the term "hair brush" to include "not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair)." Bigio, slip op. at 4. At the outset, the word "hair" preceding "brush" throughout the body of the claim does not alone limit the claim to brushes for scalp hair. At best, the word "hair" carries the meaning that the claimed invention involves brushing some kind of hair. The claim, however, does not specify or limit the claim to any particular kind of hair.

In examining the term "hair brush," the Board correctly declined to import from the specification a limitation that would apply the term only to hairbrushes for the scalp. The application in this case, specifically the "Objects of the Invention," discusses an "anatomically correct hairbrush" for brushing scalp hair. '747 application at p. 1, ll. 14-15, ll. 16-18; p. 2, ll. 4-6, ll. 7-8. Nevertheless, this court counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages. In re Zletz, 893 F.2d 319, 321 (Fed.Cir.1989). Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-09 (Fed.Cir.2004) (explaining requirement for an express disclaimer in either the specification or prosecution history).

In this case, the term "hair brush" alone does not specify the kind of hair to be groomed by the claimed invention. Thus, the term may reasonably encompass not only scalp hair brushes but also facial hair brushes. The Board correctly declined to accept Bigio's invitation to narrow the interpretation only to scalp hair by importing a limitation from the specification. Moreover, the Board's interpretation does not strain the bounds of the "broadest reasonable interpretation" of the term "hair brush." Indeed that term may reasonably encompass more than a grooming device for scalp hair. This court therefore affirms the Board's interpretation of "hair brush."

Analogous Art

Having affirmed the Board's reasonable interpretation of "hair brush," this court now reviews the use of toothbrush references as art analogous to Bigio's invention. References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed.Cir.1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed.Cir.1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).

In this case, the Board determined that the first test governed the scope of analogous art. Specifically, the Board found that "Flemming relates to the same field of invention as the appellant's claimed invention." Bigio, slip op. at 6. More specifically, the Board determined that Bigio's claimed invention relates to the "field of hand-held brushes having a handle segment and a bristle substrate segment." Id. at 6-7. This court therefore reviews that finding.

Bigio argues that the "field of endeavor" test for analogous art is unworkable because the lack of clear guidelines leaves the application of this test to an examiner's subjective judgment. To the contrary, the field of endeavor test is neither wholly subjective nor unworkable. This test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed...