In Re Skvorecz

United States Court of Appeals for the Federal Circuit
2008-1221
(Serial No. 09/772,278)

IN RE ROBERT SKVORECZ

Eugene Lieberstein, Baker & Hostetler LLP, of New York, New York, 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, Virginia, argued for the Director of the United States
Patent and Trademark Office. With him on the brief was Benjamin D.M. Wood,
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

2008-1221
(Serial No. 09/772,278)

IN RE ROBERT SKVORECZ

Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and
Interferences.
___________________________

DECIDED: September 3, 2009
___________________________

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.

1
Ex Parte Skvorecz, No. 2006-1989 (B.P.A.I. March 28, 2007) (Decision);
(B.P.A.I. Nov. 19, 2007) (denial of rehearing).
 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:

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

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 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:

2008-1221 3
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

2008-1221 4
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:

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.

2008-1221 5
 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 (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 (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.”

2008-1221 6
 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

2
Because this aspect is a matter of law, it does not raise an issue of the
Chenery doctrine, as stated in S.E.C. v. Chenery Corp., 318 U.S. 80, 87-88 (1943). See,
e.g., Killip v. OPM, 991 F.2d 1564, 1568-69 (Fed. Cir. 1993).

2008-1221 7
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 holding that some wire legs of the Skvorecz device, as

claimed, need not have an offset, when the claims state that each wire leg has an offset.

The protocol of giving claims their broadest reasonable interpretation during

examination does not include giving claims a legally incorrect interpretation. This protocol

is solely an examination expedient, not a rule of claim construction. Its purpose is to

facilitate exploring the metes and bounds to which the applicant may be entitled, and thus

to aid in sharpening and clarifying the claims during the application stage, when claims are

readily changed. See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007); In re Cortright,

165 F.3d 1353, 1358 (Fed. Cir. 1999). As explained in the Manual of Patent Examining

Procedure (MPEP) at §2111, entitled “Claim Interpretation; Broadest Reasonable

Interpretation,” “Applicant always has the opportunity to amend the claims during

prosecution, and broad interpretation by the examiner reduces the possibility that the claim,

once issued, will be interpreted more broadly than is justified.” 3 This practice may also be

useful in reissue examination. See In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).

The signal “comprising” does not render a claim anticipated by a device that contains

less (rather then more) than what is claimed. Here the examination expedient of “broadest

reasonable interpretation” was incorrectly applied to interpret “comprising” to mean that not

all the Skvorecz wire legs need have offsets, despite the claims that state

3
Although, the MPEP “does not have the force of law or the force of the rules
of Title 37 of the Code of Federal Regulations,” MPEP Foreword (8th ed., rev. 7, Aug.
2008), it “is made available to the public and . . . describe[s] procedures on which the public
can rely.” Patlex v. Mossinghoff, 758 F.2d 594, 606 (Fed. Cir. 1985).

2008-1221 8
that “each wire leg” has an offset. The Buff device does not have an offset located in each

wire that serves as a leg to support the device. In the Buff structure both the transverse

wire 48 and the longitudinal wire 49 provide the bottom support analogous to wire legs, and

it is undisputed that wire segment 48 does not have an offset. Anticipation cannot be

found, as a matter of law, if any claimed element or limitation is not present in the

reference. The “anticipation” rejection is reversed.

Indefiniteness, §112 ¶2

35 U.S.C. §112 ¶2 states:

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.

The MPEP at §2173.02 (“Clarity and Precision”) states that the “focus during the

examination of claims for compliance with the requirement for definiteness of 35 U.S.C.

[§]112, second paragraph is whether the claim meets the threshold requirements of clarity

and precision, not whether more suitable language or modes of expression are available.”

The MPEP states:

Definiteness of claim language must be analyzed, not in a vacuum, but in
light of:

(A) The content of the particular application disclosure;
(B) The teachings of prior art; and
(C) The claim interpretation that would be given by one possessing the
ordinary level of skill in the pertinent art at the time the invention was
made.

Id. The reissue examiner had not rejected any claim on this ground, but the Board entered

a new ground of rejection, rejecting claim 5 for indefiniteness. The PTO argues that the

Board correctly determined that (1) the phrase “at the separation” in dependent claim 5

lacks antecedent basis in independent claim 1, rendering claim 5 indefinite; and (2) the

2008-1221 9
indefiniteness of “at the separation” renders the term “segments” indefinite, especially

because “segments” is not defined in the specification.

Mr. Skvorecz points out that reissue claim 5 is identical to claim 5 as issued in the

original patent, and that the terms now criticized by the Board were not deemed indefinite

by any examiner. He states that the limitation added by claim 5, which states “with the

plurality of offsets welded to said wire legs at the separation of the upright sections into

segments,” was shown in the specification as originally filed, for the specification shows

that the upright sections of the wire legs form segments, as illustrated at elements 18 and

19 in Figures 2 and 3. MPEP §2173.05(e), entitled “Lack of Antecedent Basis,” states:

“There is no requirement that the words in the claim must match those used in the

specification disclosure,” and “Obviously, . . . the failure to provide explicit antecedent basis

for terms does not always render a claim indefinite.” MPEP §2173.02 states: “Some

latitude in the manner of expression and the aptness of terms should be permitted even

though the claim language is not as precise as the examiner might desire.” We agree with

Mr. Skvorecz that the clause “welded to said wire legs at the separation” does not require

further antecedent basis in claim 1, for a person skilled in the field of the invention would

understand the claim when viewed in the context of the specification.

With respect to the Board’s concern that “it is unclear what is being described by the

term ‘segments,’” on rehearing the Board proposed that if claim 5 were to recite “a

separation” instead of “the separation,” the definiteness requirement would be met. The

Board explained:

We would agree with Applicant’s argument if claim 5 cited “welded to said
wire legs to form a separation” (i.e., the separation does not yet exist).
However, the claim recites “welded to said wire legs at the separation” and

2008-1221 10
 the language “at the separation” indicates that the separation already exists
prior to the welding. This contradicts Applicant’s explanation.

Rehearing op. at 4. This helpful suggestion may be implemented on remand. 4 Subject to

this potential amendment, the rejection on the ground of indefiniteness is reversed.

Written Description, §112 ¶1

The written description requirement is set forth in 35 U.S.C. §112, ¶1:

The specification shall contain a written description of the invention, and of
the manner and process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which it pertains,
or with which it is most nearly connected, to make and use the same, and
shall set forth the best mode contemplated by the inventor of carrying out his
invention.

A purpose of the written description requirement is to provide the public with knowledge of

the patented technology, thereby to advance the useful arts. The description of the

invention provides the foundation for the scope and content of the claims, and serves to

demonstrate that the applicant is in possession of the invention that is claimed. In

fulfillment of these purposes, the applicant may employ “such descriptive means as words,

structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.”

Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The form and

presentation of the description can vary with the nature of the invention; compliance with

the written description requirement is a fact-dependent inquiry. In re Alton, 76 F.3d 1168,

1172 (Fed. Cir. 1996).

The PTO argues that the claim element “a plurality of offsets located . . . in said first

4
The PTO Rules permit an applicant, after a decision of the Board involving a
new ground of rejection, to request either further examination or rehearing. When
rehearing has been requested, and the Board has on rehearing suggested helpful
amendments, the applicant is reasonably entitled to implement the Board’s suggestions.

2008-1221 11
rim” is not described in the specification, and is described only in the proposed correction to

Figures 12 and 13, which the examiner refused to enter. Mr. Skvorecz argues that Figures

12 and 13 indeed show the offsets in the first rim, pointing to the specification’s description

of these figures as “offsets 42 are formed in the upper rim 14 of the chafing stand 10,” ’948

patent col.5 ll.18-19, “laterally displacing each leg.” The specification states that Figure 12

is “still another alternative embodiment of the present invention” and Figure 13 is a top view

of Figure 12. ’948 patent col.3 ll.13-16. Mr. Skvorecz states that his unsuccessful request

to change Figures 12 and 13 was not new matter but merely to correct an immaterial

feature of offset orientation.

Figures 12 and 13 do show such offsets in the rim. However, the PTO argues that

Figures 12 and 13 are partial figures, and do not show every leg’s offsets and their

displacement. However, the full structure is shown in other drawings of the various

embodiments, in full structure (such as Figures 1 and 7) and partial structure (such as

Figures 10 and 11). See In re Wright, 866 F.2d 422, 426 (Fed. Cir. 1989) (the specification

as a whole must be considered). A skilled artisan would readily understand Figures 12 and

13 as partial structures showing detail of the offsets. “An applicant’s disclosure obligation

varies according to the art to which the invention pertains.” In re Hayes Microcomputer

Products, Inc. Patent Litig., 982 F.2d 1527, 1534 (Fed. Cir. 1992). A person skilled in the

mechanical arts would understand the specification including the drawings as showing the

offsets and the lateral displacement of each wire leg. The Board’s finding that the written

description requirement is not met is unsupported by substantial evidence, and is reversed.

2008-1221 12
 CONCLUSION

The rejections on grounds of §§102 and 112 are reversed. The case is remanded

for further proceedings.

REVERSED AND REMANDED

2008-1221 13