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 

 Thomas A. Ladd, Baker & Daniels LLP, of Indianapolis, 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 Board of Patent Appeals 

and Interferences1

 holding all of the claims in the patent application unpatentable on the 

ground of anticipation, 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 foams." The relevant content 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 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. 

Thus Eling prepares both a rigid foam and a flexible 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 directly form a flexible foam, and do not produce a 

rigid foam. 
2006-1489 3 

The Board held Buszard's claims to be anticipated "because the appellants' claimed 

reaction mixture includes any reaction mixture which produces, at least ultimately, a flexible 

polyurethane foam." Buszard appeals, arguing that his claims explicitly state the 

requirement of a "flexible polyurethane foam reaction mixture," and that this claim element 

is not shown in the Eling reference, thereby negating "anticipation." 

 DISCUSSION 

Decisions of the PTO tribunals 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 rulings). Thus the 

Board's factual findings are reviewed to determine whether they are unsupported by 

substantial evidence, and the Board's legal conclusions 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 disclosed in a single prior art reference." In re Paulsen, 30 

F.3d 1475, 1478-79 (Fed. Cir. 1994); see Karsten Manufacturing Corp. v. Cleveland Golf 

Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) ("Invalidity on the ground of 'anticipation' 

requires lack of novelty of the invention as claimed. . . . that is, all of the elements and 

limitations of the claim must be shown in a single prior reference, 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 flexible polyurethane foam 

that is directly produced by polymerization, without crushing, and that this difference is 
2006-1489 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 claims 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, when given their broadest interpretation, read 

on the Eling product and thus are anticipated by Eling. Buszard states that this 

interpretation is devoid of support, even when viewed in accordance with the protocols of 

patent examination. During examination, the patent application claims may be given their 

broadest interpretation consistent with the specification, in order to facilitate sharpening and 

clarifying the claims at the application 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 art.'") (citation omitted). Thus 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 examination 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, during the administrative process." Id. at 322. Buszard 

argues that the Board's construction 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 "flexible polyurethane foam reaction mixture" to 

mean "any reaction mixture which produces, at least ultimately, a flexible polyurethane 

foam." Buszard states that persons experienced in the field of polyurethane foams know 

that a flexible polyurethane foam reaction mixture is different from a rigid polyurethane 

foam reaction mixture, and that this process limitation cannot be found in Eling, no matter 

how broadly that reference is read. The PTO 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 should be sustained simply because the examiner is entitled to 

give claims their broadest reasonable interpretation during examination. Buszard 

responded that the examiner's interpretation is not reasonable, as a matter of well-known 

chemistry, for flexible foam reaction mixtures are different from rigid foam reaction 

mixtures, and one does not encompass the other. 

The Solicitor proposed at oral argument that when a rigid foam is mechanically 

crushed, the chemical bonds are broken and the product is the same as the flexible product 

of a flexible foam reaction mixture. There 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 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. The Eling reference describes 

only a rigid foam reaction mixture that produces a rigid product. 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 sand. This description cannot reasonably be 

construed to describe, and thus to "anticipate," the flexible foam 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 United States Patent and Trademark Office 

(“PTO”), Board of Patent Appeals and Interferences (“Board”) gave the claim term 

“flexible polyurethane foam reaction mixture” its broadest reasonable interpretation, 

construing it to include “any reaction mixture which produces, at least ultimately, a 

flexible polyurethane foam.” Under this construction, substantial 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 prosecution as a district court would in an 

infringement suit. Instead, the Board gives claim language its broadest reasonable 

interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 
F.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 because, unlike in an infringement suit, the applicant has a 

chance to amend the claims to more precisely convey his intended meaning. 

Yamamoto, 740 F.2d at 1571; see also Zletz, 893 F.2d at 322 (“An essential purpose of 

patent examination 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, during the administrative 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 the 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, the prosecution history, and possibly 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 wants 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 the claim term in the specification. See

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

2006-1489 2
amending the claim language); Morris, 127 F.3d at 1054 (noting that the PTO must take 

into account definitions contained in the specification when interpreting claim language). 

Accordingly, if the PTO rejects a claim because a broad construction renders the 

claim invalid as anticipated, the applicant can, for example, amend the claim to narrow 

its scope and, thus, overcome the rejection. In this way, interpreting claim language 

broadly during prosecution “serves the public interest by reducing the possibility that 

claims, finally allowed, will be given broader 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 ‘amend his claims to obtain protection 

commensurate with his actual contribution to the art.’”). 

Because the Board is entitled 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 which produces, at least 

ultimately, a flexible polyurethane 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 polyurethane foams that are made flexible upon crushing, such 

2006-1489 3
as the mixture disclosed in the Eling reference. Accordingly, the Board concluded that 

Buszard’s representative claims were anticipated by the Eling reference. Id.

Because the Board must give claim language its broadest reasonable 

interpretation, I would 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 would have been required 

to give that term the definition recited in the specification. See Morris, 127 F.3d at 1054. 

But Buszard’s specification does not define this term. And the Board’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 discloses in the last full 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 compositions 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 invention 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 enumerated ingredients correspond fully to 

those taught by Eling, the claim interpretation [of “flexible polyurethane 

foam reaction mixture”] discussed earlier is consistent with this disclosure 

of [Buszard’s] specification. 

Buszard, 2006 WL 1665669, at *2. 

On appeal, Buszard alleges—and the majority appears to agree—that the term 

“flexible polyurethane foam reaction mixture” has a specific meaning 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 4
I 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 more claims particularly pointing out and 

distinctly claiming the subject matter which the applicant regards as his invention.”). 

Moreover, although Buszard asserts that the term “flexible polyurethane foam reaction 

mixture” has a well-defined meaning to someone skilled in the art, not only has Buszard 

failed to provide any evidence to back up this assertion, his briefs also fail to tell us what 

that meaning is. The only enlightenment Buszard provides regarding the meaning of 

“flexible polyurethane foam reaction 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 foam reaction mixture.”

 In oral argument, Buszard, for the first time, argued that the term “flexible 

polyurethane foam reaction mixture” should be interpreted to mean a mixture of 

ingredients that produces flexible foam upon polymerization, without a crushing step. 

Yet Buszard’s claims do not specifically exclude a crushing step.1

 Nor are his claims 

limited to chemical reactants that would produce flexible foam 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 noted, “an artisan would consider the flexible 

polyurethane foam disclosed by [Buszard] as resulting 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 crushing step of Eling.” Buszard, 2006 WL 1665669, at 

*2. 

2006-1489 5
the disputed claim term narrowly in light of his specification, which describes mixtures of 

ingredients that produce flexible foam without a crushing step. Buszard also points out 

that the flexible foams described in his specification are consistent with the general 

description of “flexible foam” in the Kirk-Othmer Encyclopedia of Chemical Technology. 

 But whether Buszard can provide descriptions of flexible foam that he believes 

are consistent with his desired interpretation 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 that support its interpretation.” Morris, 127 

F.3d at 1056. And in this case, the Board identified passages in Buszard’s specification 

that support a broad interpretation. I would, therefore, affirm. 

III 

The majority concludes that Buszard’s claims are not anticipated because flexible 

foam made from a mixture of ingredients that produces flexible foam upon 

polymerization (i.e., without a crushing step) is different from flexible foam made by first 

producing rigid foam and then crushing 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 reference, which is capable of producing a 

flexible polyurethane foam. It can. 

 2

 It is noteworthy that, before the Board, Buszard “[did] not even present 

argument, much less evidence,” that his flexible foam product differed from the flexible 

foam product disclosed in the Eling reference. Buszard, 2006 WL 1665669, at *1. 

2006-1489 6
2006-1489 7

Because a patent has not yet issued, Buszard 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.