## 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 ST EPHEN B. FALLOON

Thomas A. Ladd , Baker & Daniels LLP, of I ndianapolis, 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 Boar d of Patent Appeals

and Interferences 1 holding all of the claims in the patent application unpatentable on the ground of anticipat ion, 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).2006-1489 2 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 foam s." The relevant c ontent 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 isocyanatereactive hydrogen atoms of from 2 to 8, an isocyanate-reactive compound (3), said compound (3) having an aver age equivalent weight of more than 374 and an average number of isocyanate-r eactive hydrogen atoms of from 2 to 6 and water in the presence of a ca talyst 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 flexib le 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 direct ly form a flexible foam, and do not produce a rigid foam.2006-1489 3 The Board held Buszard's claims to be ant icipated "because the appellants' claimed reaction mixture includes any reaction mixture wh ich produces, at least ultimately, a flexible polyurethane foam." Buszard appeals, arguing that his claims explicitly state the requirement of a "flexible pol yurethane foam reaction mixture, " and that this claim element is not shown in the Eling referenc e, thereby negating "anticipation." DISCUSSION Decisions of the PTO tribunal s 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 ru lings). Thus the Board's factual findings are reviewed to determine whether they are unsupported by substantial evidence, and the Board's legal conc lusions 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 di sclosed in a single prior art reference." In re Paulsen , 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see Karsten Manufacturing Co rp. v. Cleveland Golf Co. , 242 F.3d 1376, 1383 (Fed. Cir. 2001) ("Invalid ity on the ground of 'anticipation' requires lack of novelty of the invention as cl aimed. . . . that is, all of the elements and

limitations of the claim must be shown in a single prior re ference, 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 flexib le polyurethane foam that is directly produced by polymerization, without crushing, and that this difference is2006-1489 4 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 cl aims 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, w hen given their broadest interpretation, read on the Eling product and thus ar e anticipated by Eling. Bu szard states that this interpretation is devoid of support, even when viewed in accordance with the protocols of patent examination. During ex amination, the patent applicati on claims may be given their broadest interpretation consistent with the specif ication, in order to facilitate sharpening and clarifying the claims at the app lication 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 ar t.'") (citation omitted). T hus 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 examinat ion 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, dur ing the administrative process." Id. at 322. Buszard argues that the Board's constr uction of the claims to read on and thus be anticipated by Eling's crushed solid foam is not reasonable.2006-1489 5 The Board interpreted the claim term "flexi ble polyurethane foam reaction mixture" to mean "any reaction mixture which produces, at least ultimately, a flexible polyurethane foam." Buszard states that persons experi enced in the field of polyurethane foams know that a flexible polyurethane foam reaction mixt ure is different from a rigid polyurethane foam reaction mixture, and that this process limitation c annot be found in Eling, no matter how broadly that reference is read. The PT O 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 shoul d be sustained simply because the examiner is entitled to give claims their broadest reasonable interp retation during examination. Buszard responded that the examiner's interpretation is not reasonable, as a matter of well-known chemistry, for flexible foam reaction mixtur es are different from rigid foam reaction mixtures, and one does not encompass the other. The Solicitor proposed at or al argument that when a ri gid foam is mechanically crushed, the chemical bonds are broken and the pr oduct is the same as the flexible product

of a flexible foam reaction mixture. Ther e 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 6 Buszard's specification and claims specifica lly state the requireme nt of a flexible polyurethane foam reaction mixture. No ma tter 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 mixt ure that produces a rigid pr oduct. 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 s and. This description cannot reasonably be construed to describe, and thus to "anticipate," the flexible f oam 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

## 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 Un ited States Patent and Trademark Office (“PTO”), Board of Patent Appeals and Inte rferences (“Board”) gave the claim term “flexible polyurethane foam r eaction mixture” its broadest reasonable interpretation, construing it to include “any reaction mixt ure which produces, at least ultimately, a flexible polyurethane foam.” Under this c onstruction, substantia l 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 prosec ution as a district court would in an infringement suit. Instead, the Board gives claim language its broadest reasonable interpretation consistent with the specificati on. In re Am. Acad. of Sci. Tech Ctr. , 367F.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 bec ause, unlike in an infringement suit, the applicant has a chance to amend the claims to more pr ecisely convey his intended meaning.

Yamamoto , 740 F.2d at 1571; see also Zletz , 893 F.2d at 322 (“An e ssential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainti es of claim scope be removed, as much as possible, during the adm inistrative 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 t he 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, t he prosecution history, and possi bly 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 w ants 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 t he claim term in the specification. See

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

2006-1489 2amending the claim language); Morris , 127 F.3d at 1054 (noting t hat the PTO must take into account definitions contained in the specification when interpreting claim language). Accordingly, if the PTO rejects a cl aim because a broad construction renders the claim invalid as anticipated, the applicant c an, for example, amend the claim to narrow its scope and, thus, overcome the rejection. In this way, interpreting claim language broadly during prosecution “ser ves the public interest by reducing the possibility that claims, finally allowed, will be given br oader 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 ‘a mend his claims to obtain protection

commensurate with his actual c ontribution to the art.’”).

Because the Board is entit led 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 whic h produces, at least ultimately, a flexible polyure thane 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 polyure thane foams that are made flex ible upon crushing, such

2006-1489 3as the mixture disclosed in the Eling referenc e. Accordingly, the Board concluded that Buszard’s representative claims were anticipated by the Eling reference. Id. Because the Board must give cl aim language its broadest reasonable interpretation, I woul d 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 w ould have been required to give that term the definition re cited in the specification. See Morris , 127 F.3d at 1054. But Buszard’s specification does not define th is term. And the B oard’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 disclos es in the last fu ll 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 com positions 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 invent ion by reacting an isocyanate with a polyol in the presence of a foam-forming agent and a blend of tetrahalophthalate esters and phosphorus -containing flame retardant additives.” Because these enumerat ed ingredients correspond fully to those taught by Eling, the claim in terpretation [of “flexible polyurethane foam reaction mixture”] di scussed earlier is consistent with this disclosure of [Buszard’s] specification. Buszard , 2006 WL 1665669, at *2. On appeal, Buszard alleges—and the majo rity appears to agree—that the term “flexible polyurethane foam reaction mixture” has a specific meani ng 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 4I 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 mo re claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”). Moreover, although Buszard asserts that t he term “flexible polyurethane foam reaction mixture” has a well-defined meaning to som eone skilled in the art, not only has Buszard failed to provide any evidence to back up this asse rtion, his briefs also fail to tell us what that meaning is. The only enlightenment Bu szard provides regar ding the meaning of “flexible polyurethane foam r eaction 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 f oam reaction mixture.” In oral argument, Buszard, for the fi rst time, argued that the term “flexible polyurethane foam reaction mixture” shoul d be interpreted to mean a mixture of ingredients that produces flex ible foam upon polymerization, without a crushing step. Yet Buszard’s claims do not spec ifically exclude a crushing step. 1 Nor are his claims

limited to chemical reactants that would produce flexible f oam 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 not ed, “an artisan would consider the flexible polyurethane foam disclosed by [Buszard] as re sulting 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 cr ushing step of Eling.” Buszard , 2006 WL 1665669, at *2.

2006-1489 5the disputed claim term narrowly in light of his specification, which de scribes mixtures of ingredients that produce flexible foam without a crushing step. Buszard also points out

that the flexible foams described in his s pecification are consis tent with the general description of “flexible foam” in the Kirk-Othmer Encyclopedia of Chemical Technology

. But whether Buszard can provide descripti ons of flexible foam that he believes are consistent with his desired interpretati on 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 t hat support its interpretation.” Morris , 127 F.3d at 1056. And in this case, the Board i dentified passages in Bu szard’s specification that support a broad interpretation. I would, therefore, affirm.

III The majority concludes that Buszard’s cl aims are not anticipated because flexible

foam made from a mixture of ingredients that produc es flexible foam upon polymerization (i.e., without a crus hing step) is different from flexible foam made by first producing rigid foam and then cr ushing 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 re ference, which is capable of producing a flexible polyurethane foam. It can.

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

2006-1489 62006-1489 7 Because a patent has not yet issued, Bu szard 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.