In Re Buszard

United States Court of Appeals for the Federal Circuit

2006-1489
(Serial No. 10/429,429)

IN RE DAVID BUSZARD, MATTHEW D. PHILLIPS,
RICHARD S. ROSE and STEPHEN B. FALLOON

Thomas A. Ladd, Baker & Daniels LLP, of Indianapolis, Indiana, argued for
appellants.

Shannon M. Hansen, Associate Solicitor, Office of the Solicitor, United States
Patent and Trademark Office, of Arlington, Virginia, argued for the director of the United
States Patent and Trademark Office. With her on the brief were John M. Whealan,
Solicitor, and Heather F. Auyang, Associate Solicitor.

Appealed from: United States Patent and Trademark Office, Board of Patent Appeals
and Interferences
United States Court of Appeals for the Federal Circuit

2006-1489
(Serial No. 10/429,429)

IN RE DAVID BUSZARD, MATTHEW D. PHILLIPS,
RICHARD S. ROSE and STEPHEN B. FALLOON

____________________________

DECIDED: September 27, 2007
____________________________

Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and PROST, Circuit
Judge.

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

NEWMAN, Circuit Judge.

Patent applicants David Buszard, Matthew D. Phillips, Richard S. Rose and Stephen

B. Falloon (together "Buszard") seek review of the decision of the Board of Patent Appeals

and Interferences 1 holding all of the claims in the patent application unpatentable on the

ground of anticipation, 35 U.S.C. '102. We reverse the Board's decision as to anticipation

and remand for completion of examination.

1 In re Buszard, No. 2006-1120, 2006 WL 1665669 (Bd. Pat. App. & Int. Apr.
20, 2006).
 BACKGROUND

Buszard's patent application, Serial No. 10/429,429, is directed to a flame retardant

composition that produces a flexible polyurethane foam, and the flexible foamed article

made from that composition. Claims 1 and 13 were treated as representative:

1. A flame retardant composition comprising:
a dialkyl tetrahalophthalate ester;
a phosphorus-containing flame retardant having at least
about 5 wt.% phosphorus, and
a flexible polyurethane foam reaction mixture.

13. A flexible foamed article made from the flame retardant
composition of claim 1.

The Board held that the claims are anticipated by a patent to Eling et al. entitled "Process

for making rigid and flexible polyurethane foams." The relevant content of the Eling

reference is fairly summarized in Eling's claims 1 and 2:

1. Process for preparing a rigid foam by reacting a polyisocyanate (1), an
isocyanate-reactive compound (2), said compound (2) having an average
equivalent weight of at most 374 and an average number of isocyanate-
reactive hydrogen atoms of from 2 to 8, an isocyanate-reactive compound
(3), said compound (3) having an average equivalent weight of more than
374 and an average number of isocyanate-reactive hydrogen atoms of from 2
to 6 and water in the presence of a catalyst and in the presence of a fire
retardant . . . .

2. Process for preparing a flexible foam by crushing the rigid foam
prepared according to the process according to claim 1.

Thus Eling prepares both a rigid foam and a flexible foam; the rigid foam is produced by the

chemical reaction of compounds that form a rigid foam, and Eling's flexible foam is

produced by crushing the rigid foam. In contrast, Buszard's flexible foam is produced by

the chemical reaction of compounds that directly form a flexible foam, and do not produce a

rigid foam.

2006-1489 2
 The Board held Buszard's claims to be anticipated "because the appellants' claimed

reaction mixture includes any reaction mixture which produces, at least ultimately, a flexible

polyurethane foam." Buszard appeals, arguing that his claims explicitly state the

requirement of a "flexible polyurethane foam reaction mixture," and that this claim element

is not shown in the Eling reference, thereby negating "anticipation."

DISCUSSION

Decisions of the PTO tribunals are reviewed in accordance with the standards of the

Administrative Procedure Act. See Dickinson v. Zurko, 527 U.S. 150, 165 (1999) (applying

the Administrative Procedure Act, 5 U.S.C. '706, to appeals of PTO rulings). Thus the

Board's factual findings are reviewed to determine whether they are unsupported by

substantial evidence, and the Board's legal conclusions are reviewed for correctness in law.

See In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000).

"A rejection for anticipation under section 102 requires that each and every limitation

of the claimed invention be disclosed in a single prior art reference." In re Paulsen, 30

F.3d 1475, 1478-79 (Fed. Cir. 1994); see Karsten Manufacturing Corp. v. Cleveland Golf

Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) ("Invalidity on the ground of 'anticipation'

requires lack of novelty of the invention as claimed. . . . that is, all of the elements and

limitations of the claim must be shown in a single prior reference, arranged as in the

claim.").

Buszard argues that the Eling reference shows only a rigid polyurethane foam which

when mechanically crushed loses its rigidity because it is in small particles. Buszard states

that the Eling rigid foam product is chemically different from a flexible polyurethane foam

that is directly produced by polymerization, without crushing, and that this difference is

2006-1489 3
readily understood by a person of ordinary skill in the field of polyurethane foams. Thus

Buszard states that the flexible foam mixture required by his claims is different in kind from

the rigid foam mixture described by Eling, whether or not Eling's product is subsequently

crushed into small particles.

The PTO states that Buszard's claims, when given their broadest interpretation, read

on the Eling product and thus are anticipated by Eling. Buszard states that this

interpretation is devoid of support, even when viewed in accordance with the protocols of

patent examination. During examination, the patent application claims may be given their

broadest interpretation consistent with the specification, in order to facilitate sharpening and

clarifying the claims at the application stage. In re Yamamoto, 740 F.2d 1569, 1571 (Fed.

Cir. 1984) ("The PTO broadly interprets claims during examination of a patent application

since the applicant may 'amend his claims to obtain protection commensurate with his

actual contribution to the art.'") (citation omitted). Thus the patent examiner and the

applicant, in the give and take of rejection and response, work toward defining the metes

and bounds of the invention to be patented. See In re Zletz, 893 F.2d 319, 321-22 (Fed.

Cir. 1989) (the broadest reasonable construction of claims during examination serves to

target ambiguities in claims at the time when the claims are readily amended). As

explained in Zletz: "An essential purpose of patent examination is to fashion claims that are

precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope

be removed, as much as possible, during the administrative process." Id. at 322. Buszard

argues that the Board's construction of the claims to read on and thus be anticipated by

Eling's crushed solid foam is not reasonable.

2006-1489 4
 The Board interpreted the claim term "flexible polyurethane foam reaction mixture" to

mean "any reaction mixture which produces, at least ultimately, a flexible polyurethane

foam." Buszard states that persons experienced in the field of polyurethane foams know

that a flexible polyurethane foam reaction mixture is different from a rigid polyurethane

foam reaction mixture, and that this process limitation cannot be found in Eling, no matter

how broadly that reference is read. The PTO Solicitor agreed, at the argument of this

appeal, that the flexibility or rigidity of foamed polyurethane depends on the composition of

the reaction mixture, which controls the degree of chemical cross-linking and thus the

flexibility of the polymer. The Solicitor agreed that a person of ordinary skill in the field of

polyurethane foams knows that a flexible foam and a rigid foam have different chemical

structures and are produced from different chemical reactants. Nonetheless, the Solicitor

argued that the rejection should be sustained simply because the examiner is entitled to

give claims their broadest reasonable interpretation during examination. Buszard

responded that the examiner's interpretation is not reasonable, as a matter of well-known

chemistry, for flexible foam reaction mixtures are different from rigid foam reaction

mixtures, and one does not encompass the other.

The Solicitor proposed at oral argument that when a rigid foam is mechanically

crushed, the chemical bonds are broken and the product is the same as the flexible product

of a flexible foam reaction mixture. There was no rejection on this ground, there is no

evidence or argument to this effect in the record, this theory was not mentioned by any

examiner or in the Board's opinion, and it appears to be contrary to science. This theory

was proposed without support or citation, and without opportunity for Buszard to refute it. It

is not sufficiently creditable to warrant further consideration.

2006-1489 5
 Buszard's specification and claims specifically state the requirement of a flexible

polyurethane foam reaction mixture. No matter how broadly "flexible foam reaction

mixture" is construed, it is not a rigid foam reaction mixture. The Eling reference describes

only a rigid foam reaction mixture that produces a rigid product. Only by mechanically

crushing the rigid product into small particles is it rendered flexible, as a rock can be

mechanically crushed to produce particles of sand. This description cannot reasonably be

construed to describe, and thus to "anticipate," the flexible foam product of a flexible foam

reaction mixture. We agree with Buszard that it is not a reasonable claim interpretation to

equate "flexible" with "rigid," or to equate a crushed rigid polyurethane foam with a flexible

polyurethane foam.

The decision of the Board is reversed, and the case is remanded for appropriate

further proceedings.

REVERSED and REMANDED

2006-1489 6
 United States Court of Appeals for the Federal Circuit

2006-1489
(Serial No. 10/429,429)

IN RE DAVID BUSZARD, MATTHEW D. PHILLIPS,
RICHARD S. ROSE and STEPHEN B. FALLOON

PROST, Circuit Judge, dissenting.

Consistent with our case law, the United States Patent and Trademark Office

(“PTO”), Board of Patent Appeals and Interferences (“Board”) gave the claim term

“flexible polyurethane foam reaction mixture” its broadest reasonable interpretation,

construing it to include “any reaction mixture which produces, at least ultimately, a

flexible polyurethane foam.” Under this construction, substantial evidence supports the

Board’s finding of anticipation. Because the majority fails to apply the rule that the

Board is entitled to give claim language its broadest reasonable interpretation, I

respectfully dissent.

I

As the majority opinion acknowledges, the Board does not engage in the same

claim construction process during patent prosecution as a district court would in an

infringement suit. Instead, the Board gives claim language its broadest reasonable

interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997);

In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Yamamoto, 740 F.2d 1569, 1571-

72 (Fed. Cir. 1984). This is because, unlike in an infringement suit, the applicant has a

chance to amend the claims to more precisely convey his intended meaning.

Yamamoto, 740 F.2d at 1571; see also Zletz, 893 F.2d at 322 (“An essential purpose of

patent examination is to fashion claims that are precise, clear, correct, and

unambiguous. Only in this way can uncertainties of claim scope be removed, as much

as possible, during the administrative process.”).

In other words, unlike a district court in an infringement suit, there is no need for

the Board (or this court) to engage in a complicated, in-depth claim construction

analysis during patent prosecution. In infringement suits, courts take on the difficult task

of analyzing the claim terms to ascertain the meaning the terms would have to a person

of ordinary skill in the art as of the filing date of the patent application. See Phillips v.

AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Courts examine the

claims, the specification, the prosecution history, and possibly extrinsic evidence—all in

an effort “to determine what ‘the applicant regards as his invention.’” Id. at 1312, 1314-

19 (quoting 35 U.S.C. § 112 ¶ 2). In contrast, one need not engage in a guessing game

during patent prosecution. If a claim term is ambiguous or confusing, the applicant can

(and should) clarify it. Or, if an applicant wants a claim term to have a specific meaning,

the applicant can either amend the claim to expressly convey the applicant’s intended

meaning or provide an express definition for the claim term in the specification. See

Yamamoto, 740 F.2d at 1571-72 (noting that an applicant can overcome a rejection by

2006-1489 2
amending the claim language); Morris, 127 F.3d at 1054 (noting that the PTO must take

into account definitions contained in the specification when interpreting claim language).

Accordingly, if the PTO rejects a claim because a broad construction renders the

claim invalid as anticipated, the applicant can, for example, amend the claim to narrow

its scope and, thus, overcome the rejection. In this way, interpreting claim language

broadly during prosecution “serves the public interest by reducing the possibility that

claims, finally allowed, will be given broader scope than is justified.” Yamamoto, 740

F.2d at 1571; see also id. (“The PTO broadly interprets claims during examination of a

patent application since the applicant may ‘amend his claims to obtain protection

commensurate with his actual contribution to the art.’”).

Because the Board is entitled to give claim language its broadest reasonable

interpretation, our precedent requires that our review of the Board’s interpretation be

limited to determining whether it was reasonable. In re Crish, 393 F.3d 1253, 1256

(Fed. Cir. 2004); In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004); In re Hyatt, 211 F.3d

1367, 1372-73 (Fed. Cir. 2000); Morris, 127 F.3d at 1055. Although the majority opinion

pays lip service to this precedent, it does not apply it in this case.

II

In this case, the only disputed issue is whether the Eling reference discloses a

“flexible polyurethane foam reaction mixture” as required by Buszard’s pending claims.

The Board construed this term to include “any reaction mixture which produces, at least

ultimately, a flexible polyurethane foam.” In re Buszard, No. 2006-1120, 2006 WL

1665669, at *2 (Bd. Pat. App. & Int. Apr. 20, 2006). This construction encompasses

mixtures that produce polyurethane foams that are made flexible upon crushing, such

2006-1489 3
as the mixture disclosed in the Eling reference. Accordingly, the Board concluded that

Buszard’s representative claims were anticipated by the Eling reference. Id.

Because the Board must give claim language its broadest reasonable

interpretation, I would affirm the Board’s construction of “flexible polyurethane foam

reaction mixture.” Of course, had Buszard’s specification provided a definition of the

term “flexible polyurethane foam reaction mixture,” the Board would have been required

to give that term the definition recited in the specification. See Morris, 127 F.3d at 1054.

But Buszard’s specification does not define this term. And the Board’s interpretation,

while broad, is not unreasonable. As explained by the Board, a broad construction is

consistent with Buszard’s specification:

For example, the specification discloses in the last full sentence on page 7
that “[t]he flexible polyurethane foam compositions . . . according to the
present invention include all well known, industrial compositions”
(emphasis added). Use of the term “all” supports the proposition that the
aforementioned industrial compositions include the compositions of Eling.
Additionally, in the sentence bridging pages 7 and 8 of the specification,
[Buszard] disclose[s] that “flexible polyurethane foam compositions can be
made according to the present invention by reacting an isocyanate with a
polyol in the presence of a foam-forming agent and a blend of tetra-
halophthalate esters and phosphorus-containing flame retardant
additives.” Because these enumerated ingredients correspond fully to
those taught by Eling, the claim interpretation [of “flexible polyurethane
foam reaction mixture”] discussed earlier is consistent with this disclosure
of [Buszard’s] specification.

Buszard, 2006 WL 1665669, at *2.

On appeal, Buszard alleges—and the majority appears to agree—that the term

“flexible polyurethane foam reaction mixture” has a specific meaning to one of ordinary

skill in the art. But neither Buszard’s specification nor his briefs provide a definition.

Indeed, he boldly asserts in his reply brief that he “suffer[s] no duty to define an art

recognized term.”

2006-1489 4
 I disagree. For one thing, “[i]t is the applicant[’s] burden to precisely define the

invention, not the PTO’s.” Morris, 127 F.3d at 1056; see also 35 U.S.C. § 112 ¶ 2 (“The

specification shall conclude with one or more claims particularly pointing out and

distinctly claiming the subject matter which the applicant regards as his invention.”).

Moreover, although Buszard asserts that the term “flexible polyurethane foam reaction

mixture” has a well-defined meaning to someone skilled in the art, not only has Buszard

failed to provide any evidence to back up this assertion, his briefs also fail to tell us what

that meaning is. The only enlightenment Buszard provides regarding the meaning of

“flexible polyurethane foam reaction mixture” is a single page from the Kirk-Othmer

Encyclopedia of Chemical Technology, which generally describes the differences

between “flexible foam” and “rigid foam.” Nowhere in the record, however, is there any

evidence regarding how a person of ordinary skill in the art would interpret the phrase

“flexible polyurethane foam reaction mixture.”

In oral argument, Buszard, for the first time, argued that the term “flexible

polyurethane foam reaction mixture” should be interpreted to mean a mixture of

ingredients that produces flexible foam upon polymerization, without a crushing step.

Yet Buszard’s claims do not specifically exclude a crushing step. 1 Nor are his claims

limited to chemical reactants that would produce flexible foam without a crushing step.

Buszard nevertheless urges us to engage in the same claim construction process

that courts employ in an infringement suit. According to Buszard, we should interpret

1
Indeed, as the Board noted, “an artisan would consider the flexible
polyurethane foam disclosed by [Buszard] as resulting from certain steps (e.g., adding,
mixing, heating, etc.), and [Buszard] point[s] to nothing in [his] claims which would have
excluded from these steps the crushing step of Eling.” Buszard, 2006 WL 1665669, at
*2.

2006-1489 5
the disputed claim term narrowly in light of his specification, which describes mixtures of

ingredients that produce flexible foam without a crushing step. Buszard also points out

that the flexible foams described in his specification are consistent with the general

description of “flexible foam” in the Kirk-Othmer Encyclopedia of Chemical Technology.

But whether Buszard can provide descriptions of flexible foam that he believes

are consistent with his desired interpretation is beside the point. “Absent an express

definition in [his] specification, the fact that [Buszard] can point to definitions or usages

that conform to [his] interpretation does not make the PTO’s definition unreasonable

when the PTO can point to other sources that support its interpretation.” Morris, 127

F.3d at 1056. And in this case, the Board identified passages in Buszard’s specification

that support a broad interpretation. I would, therefore, affirm.

III

The majority concludes that Buszard’s claims are not anticipated because flexible

foam made from a mixture of ingredients that produces flexible foam upon

polymerization (i.e., without a crushing step) is different from flexible foam made by first

producing rigid foam and then crushing it. That may be true, 2 but it is irrelevant. The

relevant question is whether Buszard’s claim language can reasonably be interpreted to

include the mixture disclosed in the Eling reference, which is capable of producing a

flexible polyurethane foam. It can.

2
It is noteworthy that, before the Board, Buszard “[did] not even present
argument, much less evidence,” that his flexible foam product differed from the flexible
foam product disclosed in the Eling reference. Buszard, 2006 WL 1665669, at *1.

2006-1489 6
 Because a patent has not yet issued, Buszard has the ability to correct any

ambiguities in his claim language. If Buszard seeks a specific claim interpretation, he

should amend his claim so it conveys his intended meaning.

2006-1489 7