Docket No. 2013-1140
RADER, MOORE, WALLACH
February 10, 2014
Brief Summary: Claim term “inert to light” improperly defined by examiner using dictionary definition that was inconsistent with intrinsic evidence from prosecution history. Board affirmation of obviousness rejections vacated because it relied on “factual findings resting on…incorrect claim construction. Tempo’s alternative arguments could not have been presented by cross-appeal to the Board because examiner found all claims unpatentable, and may be presented on remand.
Summary: Tempo appealed Board reversal of examiner’s rejection of claims 1-3 and 6-13 of Tivoli’s U.S. Pat. No. 6,554,446 related to a “stair-step light apparatus that uses a reflective strip of material to alert users to the edge of a step in darkened or low-light environments” as obvious. Tivoli had sued Tempo for patent infringement which then requested inter partes reexamination; the litigation was then stayed pending outcome of the reexamination (lasting over eight years). The examiner adopted five of Tempo’s proposed rejections and construed “inert to light” to match that of a dictionary. The Board disagreed with that definition “because Tivoli had defined the term during the original prosecution” by define it as a “non-photoluminescent and not activated to glow by absorbing ambient light”. In reversing the obviousness rejections, the Board relied on the examiner’s finding that the primary prior art references lacked the “inert to light” limitation. The Board also refused to consider Tempo’s alternative anticipation arguments because it had not cross-appealed raising those arguments. Tempo requested a rehearing, which was denied. In this appeal, Tempo argued that the Board erred in its construction of “inert to light”; that even if it was correct the Boared erred by relying on the examiner’s factual findings under a different claim construction; and that it did not waive its anticipation arguments. Regarding claim construction, the FC panel concluded “the intrinsic evidence supports the Board’s construction” by supplying a meaning for it when the amendment was made (noting that claims do not define it “contextually” and the specification does not expressly reference it, citing In re Morris, FC 1997)). In addition, it found “the examiner’s proposed construction adds multiple limitations that lack support in any form of intrinsic evidence” (the “extrinsic dictionary definition of ‘inert’…is not irrelevant” but “was inconsistent with the more reliable intrinsic evidence” (Bell Atl. Network Servs., FC 2001 and Cf. Kennecott Corp. FC 1987)); that, “[w]hen read in context, the specification and claims as construed by the Board do not present significant concerns that the claims might be invalid” for lack of written description; and “the Board properly avoided the circularity inherent in any attempt to construe claims with an eye to preserving their utility” (Phillips, FC 2005). Given this determination, the FC panel agreed with Tempo that “the Board erred by relying on factual findings resting on…incorrect claim construction” and vacated that decision. The FC panel also concluded that “on remand, the Board will also have the opportunity to consider Tempo’s alternative arguments” because, initially, “the record presented no decision favorable to patentability” (because all of Tivoli’s claims were found to be unpatentable) that Tempo could have appealed (under 37 CFR 41.61(b)).