In re Skvorecz

• Decision Date: 03 September 2009
• Docket Number: No. 2008-1221.,2008-1221.
• Citation: 580 F.3d 1262
• Parties: In re Robert SKVORECZ.
• Court: U.S. Court of Appeals — Federal Circuit

580 F.3d 1262

In re Robert SKVORECZ.

No. 2008-1221.

United States Court of Appeals, Federal Circuit.

September 3, 2009.

Eugene Lieberstein, Baker & Hostetler LLP, of New York, NY, argued for appellant. With him on the brief was David A. Einhorn.

William LaMarca, Associate Solicitor, Office of the 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 was Benjamin D.M. Wood, Associate Solicitor.

Before NEWMAN, FRIEDMAN, and MAYER Circuit Judges.

NEWMAN, Circuit Judge.

Robert J. Skvorecz appeals the decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), rejecting claims 1-5 and 7 in his application to reissue United States Patent No. 5,996,948 (the '948 patent).¹ We reverse the rejection and remand for further proceedings.

BACKGROUND

The Skvorecz invention is a wire chafing stand, such as is used for supporting a chafer (a device for maintaining hot food outside the kitchen). The specification explains that wire chafing stands are transported and stored nested together in multiple units, and that the nested stands tend to wedge into one another and are then difficult to separate. The invention is an improved structure whereby nested stands are readily separated. The specification describes the improved stand whereby the wire legs have an indent (also called an "offset") located adjacent to the upper ends of the legs, serving to laterally displace each leg relative to the point of attachment of the leg to the upper rim of the stand. The result is that the wire legs of one stand can nest within another stand, without significant wedging of the nested stands into each other. Patent Figure 1 shows two nested stands:

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

An embodiment of the offset is marked at 30 in Patent Figure 4:

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

Mr. Skvorecz's patent application was filed on January 12, 1998 as a continuation-in-part, and after due examination, on August 12, 1999, the examiner issued a notice of allowability and examiner's amendment. On October 14, 1999 Mr. Skvorecz filed an amendment under 37 C.F.R. § 1.312 to correct Figures 12 and 13 in the patent application, for which the PTO had prepared final drawings, as the rules provide. He explained: "The offsets 42 were drawn backwards by the Examiner in Figures 12 and 13 and therefore need to be corrected to properly conform to the specification so as to facilitate the nesting of one wire chafing stand into another." Mr. Skvorecz stated that "[t]he correction is necessary to conform the drawings to the description and claims," but that "this is an error limited only to the way the offsets 42 in the upper rim are shown facing the opposite direction" and does not affect the claims or require any changes in the specification. The '948 patent was issued on December 17, 1999 with Figures 12 and 13 unchanged, as follows:

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

On January 20, 2000, the examiner denied Mr. Skvorecz's request to correct the drawings, with the explanation: "Proposed new figure changes appear to include new matter not originally disclosed."

On March 15, 2001 Mr. Skvorecz filed reissue application 09/772,278, seeking reissuance of claims 1-7 of the '948 patent under 35 U.S.C. § 251. Claim 1, the broadest claim in the reissue application, is as follows: (underlining indicate additions and brackets indicate deletions from original patent claim 1):

1. A wire chafing stand comprising a first [an upper] rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, [a lower rim of wire steel forming a closed geometrical configuration circumscribing a second surface area with said first surface area being larger than said second surface area] and having at least two [a plurality of] wire legs with each wire leg having two upright sections interconnected to one another [at a location below the lower rim] in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90° with respect to a horizontal plane through said base support and being affixed to the first [upper] rim adjacent one end thereof [and to said lower rim at a relatively equal distance below the point of attachment to said upper rim] and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first [upper] rim for laterally displacing each wire leg relative to said first [upper] rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging.

No changes were made in the specification or drawings. During the reissue examination, claim 6 was allowed and is not before us. The reissue examiner rejected claims 1-5 and 7 as being an improper recapture of surrendered subject matter; the Board reversed this rejection, which is not before us.

The reissue examiner also rejected claims 1, 2, and 5 for anticipation based on Figure 2 of United States Patent No. 5,503,062 (the Buff patent), shown below:

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

The Board sustained this anticipation rejection as to claims 1 and 2, but reversed it for claim 5, which reads as follows:

5. A wire chafing stand as defined in claim 1 wherein said plurality of offsets are welded to said wire legs at the separation of the upright sections into segments.

The Board also entered two new grounds of rejection, rejecting claim 5 for indefiniteness, and claims 1-5 and 7 for failing to comply with the written description requirement. The Board advised Mr. Skvorecz of his option, under 37 C.F.R. § 41.50(b), either to request rehearing as to the new rejections or to reopen prosecution by the examiner. Mr. Skvorecz requested rehearing, and on rehearing the Board sustained its rejections. This appeal followed, as to the remaining grounds of rejection.

DISCUSSION

The PTO is governed by the Administrative Procedure Act (APA), and the rulings of its tribunals receive the APA standard of judicial review. Dickinson v. Zurko, 527 U.S. 150, 155, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999) (applying the APA to the PTO). Thus on appeal we give plenary review to the Board's legal conclusions, and review its findings of fact to determine if they are arbitrary, capricious, or unsupported by substantial evidence. 5 U.S.C. § 706(2). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938).

Anticipation, 35 U.S.C. § 102

A rejection for "anticipation" means that the invention is not new. Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed.Cir.1989) (anticipation requires that the identical invention is described in the reference); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed.Cir.1995) (same). Anticipation is a question of fact, and is reviewed accordingly. Glaverbel, 45 F.3d at 1554.

The Board found that the examiner established a prima facie case of anticipation based on the structural similarity between the Skvorecz invention and the Buff drawing, and that Mr. Skvorecz "failed to demonstrate that the functional characteristics of his claimed invention are not inherent in the structure disclosed by Buff." The Board stated that "[a]lthough the legs in Buff run along the long axis of the base rather than across the end of the long axis as disclosed by applicant, such is not precluded by claim language."

Mr. Skvorecz argues that his device is not the same as that of Buff, and that his claims require that each wire leg has a laterally displacing offset, while the Buff wire leg 48 does not have an offset that laterally displaces the leg from the rim. The Board agreed that "Buff's offset in the rim was not shown to be `for laterally displacing each wire leg relative to said upper rim' as required by claim 1," but nonetheless maintained the rejection. On rehearing the Board stated that Buff's wire 48 is a "transverse member" and not a wire leg, and therefore that it need not have a displacing offset. Mr. Skvorecz states, and we agree, that Buff's wire 48 is a leg of the Buff structure. The Board's contrary statement is unsupported by any evidence.

The PTO now presses the theory that claim 1 is anticipated because it can be construed to include wire legs without offsets, because the claim uses the open-ended transition term "comprising."² The PTO argues that because the signal "comprising" is open-ended, not every wire leg is required by claim 1 to include offsets. The PTO states that the usage "comprising" permits the Skvorecz structure to include legs without offsets, although claim 1 states that "said wire legs" and "each wire leg" have offsets. Thus the PTO argues that even if claim 1 were construed to require that every wire leg has an offset, the Buff patent shows offsets 52 that laterally displace wire leg 49, apparently arguing that it is irrelevant whether Buff's wire leg 48 has an offset. Thus the Board held that claim 1, when given its broadest interpretation, reads on the Buff structure and thus is anticipated.

The PTO has not correctly construed the signal "comprising." This signal simply means that the device may contain elements in addition to those explicitly mentioned in the claim. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed.Cir.2007) ("In the patent claim context the term `comprising' is well understood to mean `including but not limited to.'"). The Board erred in...