**United States Court of Appeals for the Federal Circuit**

03-1358

(Serial No. 09/451,747)

IN RE ALBERTO LEE BIGIO

[Robert C. Kain, Jr.]{.underline}, Fleit, Kain, Gibbons, Gutman, Bongini
& Bianco P.L., of Fort Lauderdale, Florida, argued for appellant.

[Thomas W. Krause]{.underline}, Associate 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 were [John M. Whealan]{.underline}, Solicitor, and [William
LaMarca]{.underline}, Associate Solicitor. Of counsel was [Cynthia C.
Lynch]{.underline}, 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**

03-1358

(Serial No. 09/451,747)

IN RE ALBERTO LEE BIGIO

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: August 24, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before NEWMAN, RADER, and SCHALL, [Circuit Judges]{.underline}.

Opinion for the court filed by [Circuit Judge]{.underline} RADER.
Dissenting opinion filed by [Circuit Judge]{.underline} NEWMAN.

During prosecution of Alberto Lee Bigio's (Bigio's) patent application
Serial No. 09/451,747 (the '747 application), the patent examiner
rejected claims 1, 2, and 4-7 as obvious under 35 U.S.C. § 103(a). The
United States Patent and Trademark Office Board of Patent Appeals and
Interferences (Board) affirmed the examiner's rejections. [In re
Bigio]{.underline}, No. 2002-0967 (Bd. Pat. App. & Interf. Jan. 24,
2003). Because the Board reasonably construed the disputed claim term,
this court affirms.

# I.

Bigio's patent application claims a hair brush. This claimed hair brush
features an allegedly unique shape, namely an hourglass configuration
for both the bristle substrate and the overall bristle array. Figure 1
depicts a preferred embodiment of the claimed hair brush:

![](media/image1.png){width="3.1875in" height="3.96875in"}

Bigio stipulates that all of the rejected claims stand or fall with
representative claim 1. Claim 1 states:

A [hair brush]{.underline} comprising

> an elongated member element having handle segment and a bristle
> substrate segment on a common axial centerline,
>
> said bristle substrate defining an hourglass shape with a core segment
> having along its longitudinal extent, a smoothly curved progressively
> radially smaller central region and progressively radially larger end
> regions,
>
> said bristle substrate carrying a plurality of [hair
> brush]{.underline} bristles,
>
> said [hair brush]{.underline} bristles segregated into groups of small
> bundles disposed over said bristle substrate in a series of axially
> aligned and radially distributed linear bristle rows,
>
> each bristle bundle in a respective linear row spaced axially apart
> along said bristle substrate and extending substantially radially with
> respect to said axial centerline and forming an hourglass shaped [hair
> brush]{.underline} bristle system for said hair.

(phrasing and emphases added).

The examiner rejected claim 1 of Bigio's application as obvious in view
of British Patent No. 17,666 (Flemming) in combination with either U.S.
Design Patent No. 424,303 (Tobias) or U.S. Design Patent No. 140,438
(Cohen). Flemming, Tobias, and Cohen each claim a particular
configuration for a toothbrush. On appeal, the Board rejected Bigio's
interpretation of "hair brush" as limited to brushes only for scalp
hair. Instead, the Board broadly construed "hair brush" to encompass
"not only brushes that may be used for human hair on \[a\] scalp, but
also brushes that may be used for hairs \[o\]n other parts of animal
bodies (e.g. human facial hair, human eyebrow hair, or pet hair)."
[Bigio]{.underline}, slip op. at 4.

Under this interpretation of the claim term "hair brush," the Board
determined that toothbrushes fell within Bigio's field of endeavor and
therefore constituted analogous art. The Board affirmed the examiner's
rejection based on the Flemming reference alone. Bigio does not dispute
that the combination of these three toothbrush references would render
his invention obvious but rather disputes that these three toothbrush
references constitute analogous art for evaluation of his hair brush
invention.

# II.

Claim construction is a matter of law that this court reviews without
deference. [Cybor Corp. v. FAS Techs., Inc.]{.underline}, 138 F.3d 1448,
1454 (Fed. Cir. 1998) (en banc). During prosecution, however, the PTO
gives claims their "broadest reasonable interpretation." [In re
Hyatt]{.underline}, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Accordingly,
this court reviews the "reasonableness" of the PTO's disputed claim term
interpretations. [In re Morris]{.underline}, 127 F.3d 1048, 1055 (Fed.
Cir. 1997).

This court reviews the ultimate conclusion of obviousness without
deference and the factual predicates for that legal conclusion for
substantial evidence. [In re Gartside]{.underline}, 203 F.3d 1305, 1315
(Fed. Cir. 2000). The identification of analogous prior art is a factual
question. [In re GPAC]{.underline}, 57 F.3d 1573, 1577 (Fed. Cir. 1995).

III\.

Bigio's challenge to the Board's determination that the toothbrush
references are analogous art requires this court to review the Board's
construction of the disputed claim term "hair brush." [Cf.]{.underline}
[In re Paulsen]{.underline}, 30 F.3d 1475, 1479 (Fed. Cir. 1997)
("\[T\]o properly compare the \[prior art\] reference with the claims at
issue, \[this court\] must construe the \[disputed\] term . . . to
ascertain its scope and meaning.").

As discussed above, the PTO gives a disputed claim term its broadest
reasonable interpretation during patent prosecution.
[Hyatt]{.underline}, 211 F.3d at 1372. The "broadest reasonable
interpretation" rule recognizes that "before a patent is granted the
claims are readily amended as part of the examination process."
[Burlington Indus. v. Quigg]{.underline}, 822 F.2d 1581, 1583 (Fed. Cir.
1987). Thus, a patent applicant has the opportunity and responsibility
to remove any ambiguity in claim term meaning by amending the
application. [In re Prater]{.underline}, 415 F.2d 1393, 1404-05 (CCPA
1969). Additionally, the broadest reasonable interpretation rule "serves
the public interest by reducing the possibility that claims, finally
allowed, will be given broader scope than is justified." [In re Am.
Acad. of Sci. Tech. Ctr.]{.underline}, 367 F.3d 1359, 1364 (Fed. Cir.
2004) (quoting [In re Yamamoto]{.underline}, 740 F.2d 1569, 1571-72
(Fed. Cir. 1984)).

In this case, the Board construed the term "hair brush" to include "not
only brushes that may be used for human hair on \[a\] scalp, but also
brushes that may be used for hairs \[o\]n other parts of animal bodies
(e.g. human facial hair, human eyebrow hair, or pet hair)."
[Bigio]{.underline}, slip op. at 4. At the outset, the word "hair"
preceding "brush" throughout the body of the claim does not alone limit
the claim to brushes for scalp hair. At best, the word "hair" carries
the meaning that the claimed invention involves brushing some kind of
hair. The claim, however, does not specify or limit the claim to any
particular kind of hair.

In examining the term "hair brush," the Board correctly declined to
import from the specification a limitation that would apply the term
only to hairbrushes for the scalp. The application in this case,
specifically the "Objects of the Invention," discusses an "anatomically
correct hairbrush" for brushing scalp hair. '747 application at p. 1,
ll. 14-15, ll. 16-18; p. 2, ll. 4-6, ll. 7-8. Nevertheless, this court
counsels the PTO to avoid the temptation to limit broad claim terms
solely on the basis of specification passages. [In re
Zletz]{.underline}, 893 F.2d 319, 321 (Fed. Cir. 1989). Absent claim
language carrying a narrow meaning, the PTO should only limit the claim
based on the specification or prosecution history when those sources
expressly disclaim the broader definition. [See, e.g.]{.underline},
[Liebel-Flarsheim Co. v. Medrad, Inc.]{.underline}, 358 F.3d 898, 906-09
(Fed. Cir. 2004) (explaining requirement for an express disclaimer in
either the specification or prosecution history).

In this case, the term "hair brush" alone does not specify the kind of
hair to be groomed by the claimed invention. Thus, the term may
reasonably encompass not only scalp hair brushes but also facial hair
brushes. The Board correctly declined to accept Bigio's invitation to
narrow the interpretation only to scalp hair by importing a limitation
from the specification. Moreover, the Board's interpretation does not
strain the bounds of the "broadest reasonable interpretation" of the
term "hair brush." Indeed that term may reasonably encompass more than a
grooming device for scalp hair. This court therefore affirms the Board's
interpretation of "hair brush."

[Analogous Art]{.underline}

Having affirmed the Board's reasonable interpretation of "hair brush,"
this court now reviews the use of toothbrush references as art analogous
to Bigio's invention. References within the statutory terms of 35 U.S.C.
§ 102 qualify as prior art for an obviousness determination only when
analogous to the claimed invention. [In re Clay]{.underline}, 966 F.2d
656, 658 (Fed. Cir. 1992). Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference
is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with
which the inventor is involved. [In re Deminski]{.underline}, 796 F.2d
436, 442 (Fed. Cir. 1986); [see also]{.underline} [In re
Wood]{.underline}, 599 F.2d 1032, 1036 (CCPA 1979).

In this case, the Board determined that the first test governed the
scope of analogous art. Specifically, the Board found that "Flemming
relates to the same field of invention as the appellant's claimed
invention." [Bigio]{.underline}, slip op. at 6. More specifically, the
Board determined that Bigio's claimed invention relates to the "field of
hand-held brushes having a handle segment and a bristle substrate
segment." [Id.]{.underline} at 6-7. This court therefore reviews that
finding.

Bigio argues that the "field of endeavor" test for analogous art is
unworkable because the lack of clear guidelines leaves the application
of this test to an examiner's subjective judgment. To the contrary, the
field of endeavor test is neither wholly subjective nor unworkable. This
test for analogous art requires the PTO to determine the appropriate
field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention. [See]{.underline}
[Wood]{.underline}, 599 F.2d at 1036 (confining the field of endeavor to
the scope explicitly specified in the background of the invention); [see
also]{.underline} [Deminski]{.underline}, 796 F.2d at 442 (determining
that the cited references were within the same field of endeavor where
they "have essentially the same function and structure").

In this case, the Board reached its assessment of the field of the
invention with reference to the function and structure of the invention.
Specifically, the Board concluded that Flemming's toothbrush was in
Bigio's field of endeavor because "the structural similarities between
toothbrushes and small brushes for hair would have led one of ordinary
skill in the art working in the specific field of hairbrushes to
consider all similar brushes including toothbrushes."
[Bigio]{.underline}, slip op. at 7. The Board thus correctly set the
field of the invention by consulting the structure and function of the
claimed invention as perceived by one of ordinary skill in the art.

Again emphasizing the correct "ordinary skilled artisan" standard, the
Board then observed that the toothbrush art could function as well for
brushing facial hair: "\[W\]e determine that it would have been readily
apparent to one of ordinary skill in the art that Flemming's toothbrush
may easily be used for brushing hair (e.g., human facial hair) in view
of the size of the bristle segment and arrangement of the bristle
bundles described in the reference." [Id.]{.underline} at 5. Based on
these findings, the Board determined that the Flemming reference fell
within the scope of arts analogous to the claimed invention. Because
substantial evidence supports the Board's factual findings regarding the
function and structure of the toothbrush art, this court affirms those
findings.

Moreover, this court detects nothing unworkable about the "field of
endeavor" test. Although the majority of the case law precedent for
analogous arts hinges on the second test, this court detects no
ambiguity in the "field of endeavor" test. While the scope of any field
of endeavor will vary with the factual description of each invention,
that variability does not equate with ambiguity and absence of a neutral
standard. To the contrary, substantial evidence must support the PTO's
factual assessment of the field of endeavor. [Gartside]{.underline}, 203
F.3d at 1315. In other words, the PTO must show adequate support for its
findings on the scope of the field of endeavor in the application's
written description and claims, including the structure and function of
the invention.

This test does not make the assessment of the field of endeavor a wholly
subjective call for the examiner. The examiner and the Board must have a
basis in the application and its claimed invention for limiting or
expanding the scope of the field of endeavor. In that vein, this court
has previously "reminded . . . the PTO that it is necessary to consider
'the reality of the circumstances' -- in other words, [common
sense]{.underline} -- in deciding in which fields a person of ordinary
skill would reasonably be expected to look for a solution to the problem
facing the inventor." [In re Oetiker]{.underline}, 977 F.2d 1443, 1447
(Fed. Cir. 1992) (quoting [In re Wood]{.underline}, 599 F.2d 1032, 1036
(CCPA 1979)) (emphasis added). Accordingly, the examiner and the Board
must consider the "circumstances" of the application -- the full
disclosure -- and weigh those circumstances from the vantage point of
the common sense likely to be exerted by one of ordinary skill in the
art in assessing the scope of the endeavor. Those factual determinations
are neither unbridled nor wholly subjective. Instead this test rests on
an assessment of the nature of the application and claimed invention in
addition to the level of ordinary skill in the art.

In this case, both the examiner and the Board found that toothbrush art
is analogous to Bigio's hair brush invention. In support of that
finding, the Board referred to the structure and function of the claimed
invention in the application. The Board further assessed the field that
one of skill in this art would consider within the same endeavor as the
claimed invention. In other words, the Board applied the test for
analogous art in keeping with the counsel of this court's predecessor:
"The differences are mere change of size and substitution of material of
the most obvious kind, [on a par with the differences between a
hairbrush and a toothbrush]{.underline}." [In re Wolfe]{.underline}, 251
F.2d 854, 856 (CCPA 1958) (emphasis added). Thus, on this record, this
court affirms the findings of the Board and upholds its traditional
tests for determining the scope of prior art analogous to the claimed
invention.

Because there is no dispute that the combination of the three toothbrush
references renders Bigio's invention obvious, this court's affirmance of
the Board's finding that toothbrush art is analogous to Bigio's
invention disposes of all remaining issues in this appeal.

# CONCLUSION

Because the Board reasonably construed "hair brush" and substantial
evidence supported its factual finding that toothbrush art was analogous
to Bigio's application, this court affirms.

# COSTS

Each party shall bear its own costs.

# [AFFIRMED]{.underline}

# **United States Court of Appeals for the Federal Circuit**

03-1358

(Serial No. 09/451,747)

IN RE ALBERTO LEE BIGIO

NEWMAN, [Circuit Judge]{.underline}, dissenting.

I respectfully dissent. The toothbrush art is not analogous to the hair
brush art. Bigio\'s patent application is directed to a hair brush, and
his claims are limited to a hair brush. A brush for hair has no more
relation to a brush for teeth than does hair resemble teeth.

The mode and mechanics of brushing teeth cannot reasonably be viewed as
analogous to the mode and mechanics of brushing hair. To state the
obvious: teeth require a brush that penetrates around the edges of
relatively large and hard substrates, a brush that administers a soapy
abrasive, a brush that works in the up-and-down and circular motion
needed to scrub teeth; a brush for hair must serve entirely different
shapes and textures and purposes. Neither the PTO nor my colleagues on
this panel points to any ground on which a person seeking to design an
improved hairbrush would deem the toothbrush art to be a source of
usable technology, and thus \"analogous,\" whereby that source is
relevant to a determination of obviousness. [See]{.underline} [In re
GPAC Inc.]{.underline}, 57 F.3d 1573, 1578 (Fed. Cir. 1995) (analogous
art is a field of technology whose selection and adaptation would be
suggested or motivated or taught, by sources in the prior art, as
relevant to the problem facing this inventor).

The panel majority affirms the Board\'s finding that the Bigio claims
are not limited to a brush for the hair of one\'s head, but includes
other bodily hair. Whether or not that is a supportable view of Bigio\'s
claims is irrelevant, for teeth are not bodily hair. Also, the
specification and claims are explicit that this is a brush for the hair
of the head. [See]{.underline} [Glaxo Wellcome, Inc. v. Andrx Pharms.,
Inc.]{.underline}, 344 F.3d 1226, 1229 (Fed. Cir. 2003) (\"In
determining the meaning and scope of patent claims, the primary sources
are the specification and the prosecution history\").

The panel majority\'s inapt determination that limiting \"hair brush\"
to \"a brush for brushing hair\" involves an inappropriate importation
of limitations from the specification is irrelevant to the ground of
rejection on which the Board and the panel majority rely. This is not a
case of application of the rule that permits the PTO to give claims
their broadest reasonable interpretation during examination, as
discussed in, [e.g.]{.underline}, [Burlington Indus., Inc. v.
Quigg]{.underline}, 822 F.2d 1581, 1583 (Fed. Cir. 1987). Whether or not
\"the term \[hair brush\] may reasonably encompass not only scalp hair
brushes but also facial hair brushes,\" as the majority finds, does not
make the leap from facial hair to teeth and thereby render the brushing
of teeth analogous to the brushing of hair.[^1] The purpose of the
\"broadest reasonable interpretation\" protocol is to permit the
applicant to add precision to vague or deficient claims while they are
subject to amendment; the protocol does not convert remote fields of
technology into \"analogous art.\"

The scope of the claims sought by Bigio is fully commensurate with the
specification; Bigio is not seeking a broader scope than that authorized
by statute whereby the claims must \"particularly point out and
distinctly claim \[what\] the applicant regards as his invention.\" 35
U.S.C. §112 ¶2. Toothbrushes are not analogous to hair brushes and the
record is devoid of suggestion of any substantive relationship between
them. From my colleagues\' contrary holding, I must, respectfully,
dissent.

[^1]: The majority states that \"Bigio does not dispute that the
    combination of these three toothbrush references would render his
    invention obvious . . . .\" That is an inaccurate statement of
    Bigio\'s position. Bigio stresses that the \"unique and distinct
    functions \[set forth in the claims\] are radically different than
    the toothbrush technology identified by the PTO examiner.\"
    Discussing the features of the claimed hairbrush, Bigio states that
    \"none of these features are shown, taught or suggested by the
    toothbrush prior art.\" These are not concessions of obviousness.