USPTO's claim construction not reasonable, anticipation rejection reversed

September 27, 2007
Post by Blog Staff

In a decision today, the Federal Circuit reversed the rejection of claims in a pending application as anticipated. The relevant limitation was "flexible polyurethane foam reaction mixture." The examiner and BPAI interpreted this to encompass any mixture that ultimately produces a flexible polyurethane foam. The alleged anticipatory reference initial produced a rigid foam, but then was mechanically crushed to result in a flexible foam end product. Based on this reference, the examiner and BPAI rejected the claims.

The Federal Circuit reversed. While claims are to be given their "broadest reasonable construction" during examination, the court held that including mechanically crushed rigid foams in the definition of flexible foam was unreasonable. While the rigid foam mixture may have resulted in a flexible product, it is not a "flexible foam reaction mixture."

Claims 1 and 13 of Buszard's application were treated as representative by the BPAI:

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.

Under these claims, the foam that is produced is flexible. The allegedly anticipating reference, a patent to Eling, is summarized by two claims from that patent:

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.

Here, a rigid foam is produced by the reaction, and that rigid foam is then crushed to make the foam "flexible."

According to the BPAI, the "flexible polyurethane foam reaction mixture" limitation "includes any reaction mixture which produces, at least ultimately, a flexible polyurethane foam." As a result, because the Eling reference ultimately resulted in a flexible foam product, the examiner and BPAI found the claims anticipated.

The Federal Circuit reversed. Specifically, while the court noted that the USPTO is to give claims their broadest reasonable interpretation in light of the specification, the USPTO's interpretation was not reasonable. As stated by the court:

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.

Because the Eling reference only disclosed a rigid foam reaction, it could not anticipate the claims. As a result, the rejection was reversed.

Judge Prost dissented. In her view, the USPTO's interpretation of Buszard's claims was reasonable, and the finding of anticipation should have been affirmed. According to Judge Prost, the better outcome is to require the applicant to amend the claims to more precisely exclude the flexible foam products in the Eling reference, as it would result in less ambiguity in the claims.

To read the full decision in In re Buszard, click here.

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