United States Court of Appeals 

for the Federal Circuit 

__________________________ 

FLO HEALTHCARE SOLUTIONS, LLC, 

Appellant, 

v. 

DAVID J. KAPPOS, DIRECTOR, 

UNITED STATES PATENT AND TRADEMARK 

OFFICE, 

Appellee, 

AND

RIOUX VISION, INC., 

Appellee. 

__________________________ 

2011-1476 

(Reexamination No. 95/000,251) 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences. 

__________________________ 

Decided: October 23, 2012 

__________________________ 

GEORGE T. SCHOOFF, Harness, Dickey & Pierce, PLC, 

of Troy, Michigan, argued for appellant. 
FLO HEALTHCARE v. KAPPOS 2

THOMAS W. KRAUSE, Associate Solicitor, United States 

Patent and Trademark Office, of Alexandria, Virginia, 

argued for appellee. With him on the brief were RAYMOND 

T. CHEN, Solicitor and AMY J. NELSON, Associate Solicitor. 

Of counsel was KRISTIN L.R. SAWERT, Associate Solicitor. 

__________________________ 

Before NEWMAN, PLAGER, and WALLACH, Circuit Judges. 

Opinion for the court filed by Circuit Judge PLAGER. 

Additional views filed by Circuit Judge PLAGER. Additional views filed by Circuit Judge NEWMAN. 

PLAGER, Circuit Judge. 

Flo Healthcare Solutions, LLC (“Flo”) appeals from a 

decision of the Board of Patent Appeals and Interferences 

(“Board”)1 of the United States Patent and Trademark 

Office (“PTO”) in inter partes Reexamination Control No. 

95/000,251.2 The Board upheld the examiner’s rejections 

of claims 8-17, 23, 24, 35, 40-42, 73, 76-79, 87, and 88. 

After full review of the parties’ arguments we arrive at 

the same conclusion, but get there, as we shall explain, by 

 1 Pursuant to the America Invents Act (“AIA”) 

amendments to Title 35 (see Public Law 112-29), the 

Board officially changed its name from the Board of 

Patent Appeals and Interferences to the Patent Trial and 

Appeal Board on September 16, 2012. 

2 Rioux Vision, Inc. v. Flo Healthcare Solutions, 

LLC, No. 2010-010026, 2011 WL 289281 (B.P.A.I. Jan. 27, 

2011) (“Board Opinion”), reh’g denied, 2011 WL 1211213 

(B.P.A.I. Mar. 30, 2011). While the reexamination was 

pending, Flo assigned the patent at issue, United States 

Patent No. 6,721,178, to InterMetro Industries Corporation (“InterMetro”). Flo then merged into InterMetro, 

with InterMetro the surviving entity. In this opinion, 

however, we adopt the parties’ practice of referring exclusively to Flo. 
3 FLO HEALTHCARE v. KAPPOS

a different route. Accordingly, we correct the Board’s 

analysis, but affirm the Board’s conclusion. 

BACKGROUND

The patent under reexamination, United States Patent No. 6,721,178, describes a mobile computer workstation intended for medical care environments. Id. at 

[54]. Figures 4A, 10A, and 16 of the ’178 patent illustrate 

representative embodiments of the claimed invention. 

Flo sued Rioux Vision, Inc. (“Rioux”) in the United 

States District Court for the Northern District of Georgia 

for infringing the ’178 patent.3 Rioux then initiated an 

 3 Flo Healthcare Solutions, LLC v. Rioux Vision, 

Inc., Case No. 1:06-CV-2600-TWT (N.D. Ga. filed Oct. 26, 

2006). The district court stayed the infringement suit 

pending the PTO’s final determination in the reexamination. The parties later agreed to voluntarily dismiss the 

infringement suit with prejudice. 
FLO HEALTHCARE v. KAPPOS 4

inter partes reexamination of the ’178 patent in the PTO, 

which led to this appeal.4 

The PTO granted Rioux’s request for inter partes reexamination, finding a substantial new question of patentability with respect to all forty-four claims of the ’178 

patent. The examiner initially issued thirteen different 

obviousness rejections, nine of which relied on United 

States Patent No. 5,287,815 to Gross (“Gross”) as a primary reference. Gross discloses a computer workstation 

for supporting and positioning a computer keyboard and 

video display terminal at optimal ergonometric positions 

with respect to the user. Id. at [57]. Figures 1 and 8 of 

Gross are representative. 

 4 An inter partes reexamination is a PTO proceeding permitted under Title 35 prior to the AIA amendments (see n.1, supra), by which a third party could 

challenge the validity of an issued patent. 35 U.S.C. 

§§ 311-318 (added November 29, 1999; amended September 16, 2011). “Unlike an ex parte reexamination proceeding, an inter partes reexamination proceeding allows 

the third-party requester to participate in the reexamination by submitting written comments addressing issues 

raised in the patent owner’s response to an office action, 

appealing a decision in favor of patentability, and participating as a party to an appeal taken by the patent 

owner.” Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1332 

(Fed. Cir. 2008). Effective September 16, 2012, the AIA 

amendments replaced inter partes reexaminations with a 

new inter partes review process. 35 U.S.C. §§ 311-319. 
5 FLO HEALTHCARE v. KAPPOS

Flo traversed the rejections, added 103 new claims, 

and submitted an Information Disclosure Statement 

listing twelve non-patent literature references. The 

examiner then issued an Action Closing Prosecution in 
FLO HEALTHCARE v. KAPPOS 6

which he found fifty-three of the claims allowable and 

determined that sixteen would be allowable if rewritten in 

independent form. The examiner withdrew the rejections 

that did not rely on Gross as a primary reference, and 

issued seven new rejections based on several of the references Flo had listed in its Information Disclosure Statement. Three of the new rejections cited an industry 

brochure (“Ergotron”) as a primary reference. Ergotron 

discloses customizable mobile computer workstations. In 

one example, Ergotron illustrates a workstation with an 

adjustable work surface to fit the height of the user. 

In response to the Action Closing Prosecution, Flo 

amended the objected claims to place them in allowable 

format, and argued, inter alia, that the prior art rejections 

were improper as applied to those of the pending claims 

that recite a “height adjustment mechanism.” Independent claim 8 is representative of those claims. 

8. A mobile workstation, comprising: 

a moveable chassis; 
7 FLO HEALTHCARE v. KAPPOS

a substantially horizontal tray supported by 

the chassis that defines a work surface; 

a height adjustment mechanism for altering the height of the horizontal tray; 

a display screen adjacent to the work surface 

that is tiltable relative to the work surface; 

an input device tray supported adjacent to the 

work surface; and 

a power unit supported by the chassis for supplying power to the display screen. 

’178 patent col. 26, ll. 14-27 (emphasis added). 

Flo argued that the “height adjustment mechanism” 

limitation is a means-plus-function limitation that invokes 35 U.S.C. § 112, ¶ 6. Flo further argued that the 

function performed by the “height adjustment mechanism” is “altering the height of the horizontal tray,” and 

that the corresponding structure disclosed in the written 

description for performing that function includes a lengthadjustable vertical beam. Flo further argued that both 

Gross and Ergotron use fixed-length vertical structures to 

adjust the height of their horizontal work surfaces, and 

that none of the cited secondary references cures this 

deficiency in Gross and Ergotron. Thus, Flo argued, the 

claims reciting a “height adjustment mechanism” were 

patentable over the cited prior art. 

The examiner then issued a Right of Appeal Notice in 

which he determined that sixty-two of the pending claims 

were patentable and that forty-five would be allowable if 

rewritten in independent form. However, the examiner 

maintained the rejections of the “height adjustment 

mechanism” claims. According to the examiner, “the 

claims at issue here do not contain the phrase ‘means for,’ 

and are therefore presumed not to fall under section 112 
FLO HEALTHCARE v. KAPPOS 8

paragraph 6. They do recite structure for performing the 

function recited in the claim, so the presumption is not 

overcome.” Right of Appeal Notice at 25. Flo appealed to 

the Board. 

The Board agreed with Flo that “the disputed claim 

limitation [height adjustment mechanism] must be interpreted in accordance with 35 U.S.C. § 112, ¶ 6” because it 

“does not recite sufficient structure for performing the 

recited function.” Board Opinion, 2011 WL 289281, at *9. 

According to the Board, “the terms ‘height adjustment’ 

merely qualify the recited ‘mechanism,’ which has not 

been shown to inherently impart structure, with a function or purpose (‘height adjustment’).” Id. The Board 

noted, however, that “[t]he description in the ‘178 Patent . . . does not compel a conclusion that the recitation of 

a ‘height adjustment mechanism’ necessarily requires the 

presence of a vertical beam.” Id. at *10. Thus, the Board 

“f[ou]nd no error in the Examiner’s conclusion that the 

limitation, even if subject to 35 U.S.C. § 112, ¶ 6, does not 

require a vertical beam as part of the recited ‘height 

adjustment mechanism.’” Id. at *9 (emphasis in original). 

Based on the examiner’s factual finding that Gross and 

Ergotron read on the “height adjustment mechanism” 

limitation absent a vertical beam requirement, the Board 

affirmed the prior art rejections with respect to all but one 

of the disputed claims. Id. at *10-11. 

Flo appealed to this court. We have jurisdiction under 

35 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

I. 

According to Flo, the Board properly held that the 

“height adjustment mechanism” limitation must be interpreted in accordance with 35 U.S.C. § 112, ¶ 6. Appel-
9 FLO HEALTHCARE v. KAPPOS

lant’s Corrected Br. at 10. Flo argues, however, that the 

Board committed legal error when it construed the 

“height adjustment mechanism” limitation as not including a length-adjustable vertical beam, because the written 

description “clearly links and associates a lengthadjustable vertical beam with altering or adjusting the 

height of the horizontal tray.” Id. at 17 (emphasis in 

original). 

We agree with Flo that the Board’s decision was 

predicated upon a legally erroneous construction of the 

“height adjustment mechanism” limitation. Id. at 4. 

However, the error does not lie, as Flo urges, in the 

Board’s analysis of the structures disclosed in the written 

description for altering the height of the horizontal tray. 

Rather, the Board erred in holding that the “height adjustment mechanism” limitation invokes 35 U.S.C. § 112, 

¶ 6 in the first place. 

Our cases have established two guidelines for determining whether the special rules of claim construction set 

forth in § 112, ¶ 6 apply to a given claim limitation. The 

guidelines are straightforward: use of the word “means” 

creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6, while failure to use the word 

“means” creates a rebuttable presumption that the drafter 

did not intend the claims to be governed by § 112, ¶ 6. 

See Personalized Media Commc’ns LLC v. Int’l Trade 

Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). In rebutting the presumption, when a claim recites a function 

“but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the 

recited function, the claim is not in means-plus-function 

format even if the claim uses the term means.” Id. at 704 

(quoting Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 

1427-28 (Fed. Cir. 1997) (internal quotes omitted)). 

Conversely, “a limitation lacking the term ‘means’ may 
FLO HEALTHCARE v. KAPPOS 10

overcome the presumption against means-plus-function 

treatment if it is shown that ‘the claim term fails to recite 

sufficiently definite structure or else recites function 

without reciting sufficient structure for performing that 

function.’” Mass. Inst. of Tech. v. Abacus Software, 462 

F.3d 1344, 1353 (Fed. Cir. 2006) (quoting CCS Fitness, 

Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 

2002)). 

Since the term “means” is not present in the claims on 

appeal, it is the latter form of rebuttal that is at issue 

here. The Board determined that the presumption was 

sufficiently rebutted because “the disputed claim limitation [height adjustment mechanism] does not recite 

sufficient structure for performing the recited function.” 

Board Opinion, 2011 WL 289281, at *9. According to the 

Board, “the terms ‘height adjustment’ merely qualify the 

recited ‘mechanism,’ which has not been shown to inherently impart structure, with a function or purpose (‘height 

adjustment’).” Id. Thus, the Board “conclude[d] that the 

disputed claim limitation must be interpreted in accordance with 35 U.S.C. § 112, ¶ 6.” Id. 

We are not convinced that the presumption against a 

means-plus-function construction is that easily rebutted. 

“Our cases make clear . . . that the presumption flowing 

from the absence of the term ‘means’ is a strong one that 

is not readily overcome.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). 

When the claim drafter has not signaled his intent to 

invoke § 112, ¶ 6 by using the term “means,” we are 

unwilling to apply that provision without a showing that 

the limitation essentially is devoid of anything that can be 

construed as structure. See Masco Corp. v. United States, 

303 F.3d 1316, 1327 (Fed. Cir. 2002). Thus, we will not 

apply § 112, ¶ 6 if the limitation contains a term that “is 

used in common parlance or by persons of skill in the 
11 FLO HEALTHCARE v. KAPPOS

pertinent art to designate structure.” Lighting World, 382 

F.3d at 1359. 

It is the case that the generic term “mechanism” 

standing alone may connote no more structure than the 

term “means.” Mass. Inst. of Tech., 462 F.3d at 1354. 

However, we have also recognized that surrounding claim 

language further defining the mechanism can add sufficient structure to avoid a § 112 ¶ 6 construction. Id. In 

Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 

(Fed. Cir. 1996), for example, we held that § 112, ¶ 6 did 

not apply to the claim limitation “detent mechanism” 

because dictionary definitions established that “the noun 

‘detent’ denotes a type of device with a generally understood meaning in the mechanical arts . . . .” Id. at 1583. 

Dictionary definitions similarly show that the noun 

“adjustment,” which modifies “mechanism” here, has a 

reasonably well-understood meaning as a name for a 

structure. See Random House Unabridged Dictionary 25 

(2d ed. 1993) (“3. a device, as a knob or lever, for adjusting: the adjustments on a television set”).5 While this 

definition certainly “qualif[ies] the recited ‘mechanism’ . . . with a function or purpose,” Board Opinion, 

2011 WL 289281, at *9, a drafter’s decision to define “a 

particular mechanism . . . in functional terms is not 

sufficient to convert a claim element containing that term 

into a ‘means for performing a specified function’ within 

the meaning of section 112(6)” because “[m]any devices 

take their names from the functions they perform.” 

Greenberg, 91 F.3d at 1583. “Height adjustment mechanism” is just such a term. 

 5 But cf. Webster’s Ninth New Collegiate Dictionary

57 (1985) (“4. a means (as a mechanism) by which things 

are adjusted to one another”). 
FLO HEALTHCARE v. KAPPOS 12

No evidence intrinsic to the ’178 patent casts doubt on 

this conclusion. The term “height adjustment mechanism” appears in the written description of the ’178 

patent twenty-four times, and not once is it used in a 

purely functional manner designed to invoke § 112, ¶ 6. 

Instead, the written description typically uses the term 

“height adjustment mechanism” to designate a class of 

structures that are generally understood to persons of 

skill in the art. For example, the ’178 patent teaches: “In 

addition [to a gas-spring mechanism], other types of 

height adjustment mechanisms would also be suitable, 

such as a rack and pinion mechanism, a cable and pulley 

mechanism, a ratchet mechanism, a ball screw mechanism, a removable pin and holes arrangement, and so 

forth.” Id. col. 9, ll. 3-8. Thus, the written description 

confirms that the term “height adjustment mechanism” 

indicates a structure, and is not “simply a nonce word or a 

verbal construct that is [used as] . . . a substitute for the 

term ‘means for.’” Lighting World, 382 F.3d at 1360. 

We find that the term “height adjustment mechanism,” as used in the ’178 patent and in common parlance, 

reasonably imparts sufficient structure so that the presumption against applying § 112, ¶ 6 in this context is not 

overcome. Accordingly, the Board erred by construing the 

“height adjustment mechanism” limitation under § 112, 

¶ 6.6 We thus disapprove that portion of the Board’s 

decision.7

 6 We arrive at this conclusion under either the deferential standard of review stated in In re Morris, 127 

F.3d 1048, 1055 (Fed. Cir. 1997), or the non-deferential 

review standard stated in In re Baker Hughes, 215 F.3d 

1297, 1301 (Fed. Cir. 2000). See accompanying Additional 

Views. 

7 In reaching this conclusion, we do not run afoul of 

Securities & Exchange Commission v. Chenery Corp., 318 
13 FLO HEALTHCARE v. KAPPOS

However, although the Board’s decision was predicated upon a legally erroneous construction of the “height 

adjustment mechanism” limitation, we nevertheless agree 

with the Board’s ultimate conclusion that the claims do 

not require a length-adjustable vertical beam. Board 

Opinion, 2011 WL 289281, at *9. The claims themselves 

do not recite such a limitation. It is true that all of the 

embodiments discussed in the patent have a lengthadjustable vertical beam, but it is not proper to import 

from the patent’s written description limitations that are 

not found in the claims themselves. Silicon Graphics, Inc. 

v. ATI Techs., Inc., 607 F.3d 784, 792 (Fed. Cir. 2010) (“A 

construing court’s reliance on the specification must not 

go so far as to import limitations into the claims from 

examples or embodiments appearing only in a patent’s 

written description unless the specification makes clear 

that the patentee intends for the claims and the embodiments in the specification to be strictly coextensive.”) 

(internal quotation marks omitted). 

We are mindful that this case comes to us on appeal 

from the PTO. During reexamination Flo presumably 

could have included a length-adjustable vertical beam 

limitation in the disputed claims; indeed, Flo did just that 

 

U.S. 80 (1943). This court has long recognized that we 

may, “where appropriate, affirm the agency on grounds 

other than those relied upon in rendering its decision, 

when upholding the agency’s decision does not depend 

upon making a determination of fact not previously made 

by the agency.” In re Comiskey, 554 F.3d 967, 974 (Fed. 

Cir. 2009). We also need not remand for further proceedings before the PTO as we did in In re Aoyama, 656 F.3d 

1293 (Fed. Cir. 2011), since Flo would not have had the 

opportunity to further amend the claims or submit new 

evidence rebutting the presumption against application of 

35 U.S.C. § 112, ¶ 6 had the Board upheld the examiner’s 

claim construction in the first place. 
FLO HEALTHCARE v. KAPPOS 14

with several of the claims that are not on appeal. But 

with the claims on appeal, Flo for whatever reasons chose 

not to make that change. Because Flo decided not to 

amend the disputed claims to directly include a lengthadjustable vertical beam when it had the opportunity to 

do so, we decline to read such a limitation into the claims 

on appeal. We thus affirm the Board’s conclusion that the 

claims do not require a length-adjustable vertical beam. 

II. 

Having corrected the claim construction, we now apply that construction to the PTO’s prior art rejections. 

Anticipation under 35 U.S.C. § 102 is a question of fact, In 

re Hyatt, 211 F.3d 1367, 1371-72 (Fed. Cir. 2000), while 

obviousness under 35 U.S.C. § 103 is a question of law 

based on underlying findings of fact, In re Gartside, 203 

F.3d 1305, 1316 (Fed. Cir. 2000). We uphold the Board’s 

factual determinations unless they are not supported by 

substantial evidence, and review the Board’s legal conclusions without deference. Id. 

As earlier set forth, representative claim 8 recites a 

mobile workstation comprising: (a) a movable chassis, (b) 

a substantially horizontal tray supported by the chassis 

that defines a work surface, (c) a height adjustment 

mechanism for altering the height of the horizontal tray, 

(d) a display screen adjacent to the work surface that is 

tiltable relative to the work surface, (e) an input device 

tray supported adjacent to the work surface, and (f) a 

power unit supported by the chassis for supplying power 

to the display screen. The Board found no error in the 

examiner’s factual finding that the cited prior art references either teach or suggest each of these limitations, 

and affirmed the examiner’s prior art rejections with 

respect to all but one of the disputed claims. Board 

Opinion, 2011 WL 289281, at *10-11.
15 FLO HEALTHCARE v. KAPPOS

Based on our review of the record, we are satisfied 

that the factual determinations underlying the Board’s 

decision are supported by substantial evidence, and that 

the Board came to the correct legal conclusions based on 

those facts. Flo does not suggest otherwise. Flo’s only 

argument on appeal is that the prior art fails to teach or 

suggest a length-adjustable vertical beam. But as we 

have discussed, the claims on appeal when properly 

construed do not require a length-adjustable vertical 

beam. And as Flo acknowledges, the prior art rejections 

must stand in the absence of such a limitation. Oral 

Argument at 8:10-8:40, available at http://www.cafc.

uscourts.gov/oral-argument-recordings/2011-1476/all. We 

thus affirm the Board’s decision that the claims are not 

allowable. 

CONCLUSION

For the foregoing reasons, we affirm the Board’s rejection of claims 8-17, 23, 24, 35, 40-42, 73, 76-79, 87, and 88 

under 35 U.S.C. §§ 102 and 103. 

AFFIRMED 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

FLO HEALTHCARE SOLUTIONS, LLC, 

Appellant, 

v. 

DAVID J. KAPPOS, DIRECTOR, 

UNITED STATES PATENT AND TRADEMARK 

OFFICE, 

Appellee, 

AND

RIOUX VISION, INC., 

Appellee. 

__________________________ 

2011-1476 

(Reexamination No. 95/000,251) 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences. 

__________________________ 

PLAGER, Circuit Judge, additional views. 

The Standard of Review for Board 

Claim Constructions 

The opinion in this case intentionally elides the question of the standard of review applied by this court to 

claim construction decisions of the Board (the Patent 

Trial and Appeal Board, formerly the Board of Patent 
FLO HEALTHCARE v. KAPPOS 2

Appeals and Interferences). The reason is that various of 

our cases seem to apply one or the other of two (possibly 

three—see infra) inconsistent standards, mostly without 

acknowledging that the other standard exists. It is difficult to know which of these standards is the operative 

one. In this case, the outcome is the same under whatever standard, but that may not always be the case, and it 

is not helpful to the bar and the parties in appeals to this 

court to leave the issue unclear. 

One standard of review is exemplified by the 1997 decision of this court in In re Morris.1 In Morris, the first 

issue decided was whether, in light of two then-recent en 

banc decisions by this court, Markman2 and In re 

Donaldson,3 the Board was free to continue applying its 

“broadest reasonable interpretation” standard to claim 

construction issues before it. We held “yes.” Morris 

continues to be cited to this day by the PTO as authority 

for the Board to apply that standard to claim construction 

when an appeal is taken to the Board from an examiner’s 

rejection of a claim. See, e.g., the Government’s brief in 

this case at p. 14. 

With regard to the further question—the standard of 

review applied by this court when in turn we review the 

Board’s claim construction—Morris went on to say that 

“[t]he question then is whether the PTO’s interpretation 

of the disputed claim language is ‘reasonable.’”4 The term 

“reasonable” in that context could be seen as a reflection 

of the Board’s use of a “broadest reasonable interpretation” standard, which Morris had just approved. 

 1 In re Morris, 127 F.3d 1048 (Fed. Cir. 1997). 

2 Markman v. Westview Instruments, Inc., 52 F.3d 

967 (Fed. Cir. 1995) (en banc). 

3 In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994) (en 

banc). 

4 Morris, 127 F.3d at 1055. 
3 FLO HEALTHCARE v. KAPPOS

In terms of the later-required Administrative Procedure Act (APA) review standard,5 “reasonable” can be 

seen as reflecting the notion of “not arbitrary and capricious,” the APA standard for non-fact issues that are not 

“pure” questions of law. However ascribed, at a minimum 

it connotes a deferential standard. Morris itself affirmed 

the Board’s decision by noting “that the PTO’s interpretation is reasonable in light of all the evidence before the 

Board.”6 This deferential “is the Board’s decision reasonable” standard for review of Board claim constructions, 

pronounced in Morris, has been followed by a number of 

Federal Circuit cases since then, including one as recent 

as 2010.7 

However, a few years after Morris, an opinion of this 

court, In re Baker Hughes,8 announced a different review 

standard for this court when evaluating a Board claim 

construction. The question in the case was whether the 

Board was correct in holding the claims at issue obvious. 

The opinion noted the usual rule that we treat without 

deference to the lower forum the ultimate question of 

whether a claim is obvious. The opinion further acknowledged that the APA applied to Board decisions: “We 

review . . . the Board’s findings of fact for substantial 

evidence because they are ‘on the record of an agency 

hearing provided by statute,’” citing APA § 706.9 

 5 See Dickinson v. Zurko, 527 U.S. 150, 152 (1999). 

6 Morris, 127 F.3d at 1055. 

7 See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 

1259 (Fed, Cir. 2010); In re ICON Health and Fitness, 

Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Crish, 393 

F.3d 1253, 1256 (Fed. Cir. 2004). 

8 In re Baker Hughes, 215 F.3d 1297 (Fed. Cir. 

2000). 

9 Id. at 1300. 
FLO HEALTHCARE v. KAPPOS 4

Later in the opinion, however, the court stated a nodeference test regarding review of the Board’s claim 

construction, comparable to that of district court constructions: “Although the PTO gives claims the broadest 

reasonable interpretation consistent with the written 

description . . . claim construction by the PTO is a question of law that we review de novo, . . . just as we review 

claim construction by a district court.”10 As authority for 

that proposition Baker Hughes cited the earlier en banc

opinion in In re Donaldson; Morris was not cited. 

As noted above, In re Donaldson was one of the cases 

considered in Morris, and found not to be controlling 

regarding the standard of review. It is true that the 

Donaldson opinion had stated the review rule in nondeferential “de novo” terms, but had explained that the 

standard applied to cases in which “there are no underlying factual issues.”11 In any event, the no-deference 

language subsequently picked up in Baker Hughes regarding review of Board claim construction decisions, analogous to district court reviews, has been recited in various 

cases, including as recently as this year.12 

The consequence of all this is that we now appear to 

have two contradictory lines of authority on the question 

of how this court reviews Board claim constructions—a 

deferential “reasonable” (arbitrary/capricious-type) review, and a no-deference “pure” law type review. The fact 

that the APA now governs our review of PTO decisions 

 10 Id. at 1301. 

11 Donaldson, 16 F.3d at 1192. 

12 See, e.g., In re Montgomery, 677 F.3d 1375 (Fed. 

Cir. 2012); In re Aoyama, 656 F.3d 1293, 1296 (Fed. Cir. 

2011); In re NTP, Inc., 654 F.3d 1268, 1273 (Fed. Cir. 

2011); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 

1364 (Fed. Cir. 2004); In re Bigio, 381 F.3d 1320, 1324 

(Fed. Cir. 2004). 
5 FLO HEALTHCARE v. KAPPOS

does not provide guidance on which is the right standard. 

This is because the APA itself provides one standard for 

“pure” questions of law—which are reviewed without 

deference—and different, more deferential, standards for 

questions of fact and for mixed questions of fact and law.13 

The question then becomes whether claim construction by the Board is to be considered a question of “pure” 

law—the way this court treats claim construction in 

district court litigation under Cybor Corp.14—and thus to 

be reviewed without deference; or whether it is something 

else, a blend of law and fact and judgment—as the Supreme Court said in Markman,15 a “mongrel practice”—in 

which case it is at least arguably subject to the “arbitrary 

and capricious” standard of APA § 706. Interestingly, 

none of the cases applying the Baker Hughes no-deference 

standard has paused to explain why that is the preferable 

standard as a matter of law or policy, or how it relates to 

the review standard that the Board uses. 

Morris, as one of the first of the cases to pronounce on 

this issue with its “reasonableness” standard, is presumptively the controlling precedent until overturned by the 

court en banc or by the Supreme Court.16 However, 

Morris was handed down before this court decided that 

claim construction in district courts would be reviewed 

without deference, so it did not have the benefit of the 

arguments in favor of a “pure” question of law approach, 

nor did it have cause to recognize the potential problem of 

having two inconsistent review standards. That latter 

 13 5 U.S.C. § 706. 

14 Cybor Corp. v. FAS Techs, Inc., 138 F.3d 1448 

(Fed. Cir. 1998); see also Markman v. Westview Instr., 

517 U.S. 370 (1996). 

15 Markman, 517 U.S. at 378. 

16 South Corp. v. U.S., 690 F.2d 1368 (Fed. Cir. 

1982). 
FLO HEALTHCARE v. KAPPOS 6

problem is rendered more acute by the Board’s use of the 

“broadest reasonable interpretation” in reexaminations, 

raising the potential of parallel appeals over a Board 

decision and a district court decision applying different 

standards of review to the same claim construction question.17

The ostensible purpose behind the PTO’s use of the 

“broadest reasonable interpretation” of an applicant’s 

proposed claim is to allow the examiner and the applicant 

to explore the possible scope of the claim, particularly as 

it implicates prior art, and to provide opportunity during 

the review process for clarification and refinement of the 

claim language. In that sense it is an administrative tool 

used by the PTO upon initial consideration of claims, 

aimed at “fashion[ing] claims that are precise, clear, 

correct, and unambiguous,”18 a goal much to be desired. 

Later, when a claim construction issue arises, for example 

in an infringement suit, the search is for the one “correct” 

interpretation that reflects those qualities. Thus when a 

district court addresses claim construction, the obligation 

in the first instance is on the district court trying the 

matter, and ultimately on the appellate court, to make 

that determination. 

One of the principal purposes behind the creation of 

this court was to provide national uniformity in patent 

matters. It can be argued that a uniform standard for 

review of claim construction matters, regardless of the 

forum whose decision is being appealed, would be consistent with that purpose. That would suggest applying a 

single “question of law” standard—determining the single 

“correct” interpretation—in reviewing Board claim con-

 17 Cf. In re Baxter Intern. Inc., 678 F.3d 1357, 1366 

(Fed. Cir. 2012) (Newman, J., dissenting). 

18 In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). 
7 FLO HEALTHCARE v. KAPPOS

structions just as in reviewing district court claim constructions. 

However, that creates at least the appearance of an 

incompatible situation in the review process, since this 

court presumptively would be applying a more narrow 

interpretation to the claims than the Board did. To the 

extent the Board upholds an examiner’s “broadest reasonable interpretation” of a claim, even though the Board 

might itself have thought a different construction was the 

single “correct” one, there is a potential for the Board to 

find itself overruled on appeal even though it might have 

arrived at the same interpretation as the appellate court 

under a more narrow standard.19 Given that this court’s 

role in these cases is to review an agency decision on the 

record before the agency, the question must be asked 

whether a no-deference standard is consistent with that 

role, and with the deference that Zurko commands this 

court give to the PTO. 

This incompatibility concern assumes that there is a 

substantive difference, rather than just a verbal one, 

between the “broadest reasonable interpretation” and 

what would be the single “correct” interpretation. Said 

another way, it assumes that, conceptually at least, the 

Board’s application of the “broadest reasonable interpretation” of the contested claim language can include within 

it the single “correct” interpretation, but may include 

other reasonable interpretations as well. 

A recent case in this court suggests a third possible 

standard for review of Board claim constructions that 

 19 Whether the Board in reviewing examiner rejections could or should apply a more narrow standard of 

review is a policy question for the PTO; Morris approved 

but did not mandate the Board’s use of the “broadest 

reasonable interpretation” standard. 
FLO HEALTHCARE v. KAPPOS 8

bridges this concern, a standard to my knowledge not 

previously articulated. In Abbott Diabetes Care, Inc.,20

the court began its discussion of the case saying, “[c]laim 

construction is a legal question, reviewed de novo. . . . In 

contrast to district court proceedings involving an issued 

patent, claims under examination before the PTO are 

given their broadest reasonable interpretation consistent 

with the specification.”21 Though that leaves open exactly 

what standard the court itself was intending to apply, the 

court later said, “[w]e conclude, therefore, that under the 

broadest reasonable construction, [the term at issue] is 

properly interpreted to mean [what the court understood 

it to mean]. Accordingly we vacate the Board’s decisions . . . and remand for the Board to apply the correct 

claim construction.”22 

On its face, this appears to be a blend of the other two 

standards—non-deferential review by the court, but with 

the court applying the broadest reasonable interpretation 

of the claim consistent with the administrative practice, 

rather than a single “correct” interpretation. In effect, the 

decision of the Board would become irrelevant since the 

court reapplies “de novo” the Board standard to the facts 

of the case. (Later in its conclusion, however, the opinion 

notes that the Board’s construction of a particular term in 

dispute was “unreasonable and inconsistent with the 

specification,” which sounds more like Morris’s “reasonableness” test.23) 

This blended approach, if that is what the court applied, has the benefit of avoiding the incompatibility 

problem noted earlier between the Board’s broad review 

 20 In re Abbott Diabetes Care Inc., Nos. 2011-1516, 

1517, 2012 WL 4465236 (Fed. Cir. September 28, 2012). 

21 Id. at *4 (citations omitted). 

22 Id. at *6 (footnote omitted). 

23 Id. at *7. 
9 FLO HEALTHCARE v. KAPPOS

standard and a single correct review standard (assuming 

those are operationally different), but it retains the possibility of competing outcomes between decisions reviewing 

the Board and those reviewing a district court construction of the same claim language. Under what circumstances this third standard will produce results that differ 

from those that might be reached under either the Morris

or Baker Hughes standards is an existential question 

about which I offer no view. 

Whichever way this court’s review rule should be cast, 

and for whatever reasons, it is perhaps time that the 

court definitively decide en banc on an agreed review 

standard, one that provides clear direction to the PTO 

and the inventor community. Although the review standard may not always dictate the result, as a matter of 

basic court law there should be one standard uniformly 

applied by the court to Board claim constructions, rather 

than what may appear to be panel-dependent articulations.24 

Rules of law provide the predictions for future decisions, on which citizens can rely in the conduct of their 

activities. As a court of appeals, it is this court’s function 

to decide the cases before it, but also to rationalize and 

clarify the applicable rules of law. When, as here, there 

exists an unnecessary lack of clarity in our rules, I believe 

we have an obligation as a court to address the problem 

and, if possible, correct it. 

 24 Mea culpa—my recognition of this problem stems 

in part from my trying for purposes of this case to determine what is the proper statement of the standard, and 

from having authored Morris and also having been on the 

panel in Baker Hughes. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

FLO HEALTHCARE SOLUTIONS, LLC, 

Appellant, 

v. 

DAVID J. KAPPOS, DIRECTOR, 

UNITED STATES PATENT AND TRADEMARK 

OFFICE, 

Appellee, 

AND

RIOUX VISION, INC., 

Appellee. 

__________________________ 

2011-1476 

(Reexamination No. 95/000,251) 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences. 

__________________________ 

NEWMAN, Circuit Judge, additional views. 

This court is charged with assuring, through judicial 

process, that correct patent law is consistently and correctly applied, in the administrative agencies and in the 

courts. Our judicial obligation is not merely of philosophical concern, but of critical economic consequence. 
FLO HEALTHCARE v. KAPPOS 2

The Federal Circuit Court of Appeals was created so 

that all patent appeals from the district courts throughout 

the nation, together with all appeals from the Patent and 

Trademark Office and the International Trade Commission, will be resolved in a single tribunal, under a single 

national law. However, as this case illustrates, this goal 

is being undermined by a hodgepodge of procedural 

rulings, inferences, and presumptions that ignore the 

routine mechanisms of patent examination, that confound 

the standards of review, and that misapply the principles 

of administrative deference. The loser is the technology 

community, whose incentive for innovation and commerce 

the patent system serves. As former Commissioner of 

Patents and Trademarks Donald Banner testified in 

supporting formation of the Federal Circuit: 

Unless the inventor can have reasonable certainty, that, once granted, his patent is (1) valid 

and (2) enforceable, then the rights conveyed by a 

patent are illusory, the government has defaulted 

on its responsibilities under the patent contract, 

the patent is worthless, and ultimately, the patent 

system becomes a cruel hoax. 

Court of Appeals for the Federal Circuit: Hearings Before 

the Subcomm. on Courts, Civil Liberties, and the Administration of Justice of the Comm. of the Judiciary, 97th 

Cong. 177-78 (1981). 

The Federal Circuit resulted from a collaboration of 

industry and government that undertook to understand 

how the law—all areas of law—serve technological advance. Much has been written about the Domestic Policy 

Review of Industrial Innovation, led by President Carter,1

 1 See, e.g., Pauline Newman, The Federal Circuit—

A Reminiscence, 14 Geo. Mason U. L. Rev. 513, 514 (1992) 
3 FLO HEALTHCARE v. KAPPOS

and I here focus only on the aspect that led to stabilization of patent law through judicial restructure. 

It was recognized that the inconsistency and unreliability of judicial application of law was more extreme as 

to patent law than for any other area of federal law. The 

variation among tribunals was notorious, as was the 

“notorious difference between the standards applied by 

the Patent Office and by the courts,” as stated a decade 

earlier in Graham v. John Deere Co., 383 U.S. 1, 18 

(1966). The detriment to innovative advance and industrial activity was well recognized. Chief Judge Markey of 

the Court of Customs and Patent Appeals testified that: 

The crying need for definitive, uniform, judicial 

interpretation of the national law of patents, on 

which our citizens may rely and plan with some 

certainty, has been recognized for over 60 years. 

Hearings, 97th Cong. 7. 

The conclusion that a uniform national patent law, 

consistently applied in the Patent Office and the courts, 

was critical to the nation’s technological leadership and 

industrial strength was implemented by the simple expedient of consolidating all patent appeals in a single court. 

The House Report summarized the proposed consolidation: 

Presently, there are three possible forums for patent litigation: the Court of Customs and Patent 

Appeals, a federal district court, or the Court of 

Claims. . . . [T]he primary problem in this area is 

uncertainty which results from inconsistent application of the law to the facts of an individual 

 

(discussing Domestic Policy Review of Industrial Innovation, (Final Report, U.S. Dep't of Commerce (1979))). 
FLO HEALTHCARE v. KAPPOS 4

case. . . .[T]he merger proposal directly addresses 

the issue. 

H.R. Rep. 97-312, at 21 (1981). 

To aid in assuring that patentability is governed by 

the same law in the Patent Office as in the courts, the 

Federal Courts Improvement Act of 1982 eliminated the 

separate appellate paths of the Court of Customs and 

Patent Appeals and the regional circuit courts of appeal. 

The charge to the Federal Circuit was ambitious: to bring 

certainty and predictability to the patent system and thus 

to provide enhanced incentive to invention and innovation, by assuring that the same law is applied in all 

tribunals. To this end, the court gives objective, de novo

review to rulings of patent law, whatever their source. 

E.g., Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 

1448, 1455 (Fed. Cir. 1998) (claim interpretation is a 

question of law, and receives de novo determination on 

appeal). 

However, perhaps in accommodation to the increasing 

complexity of technological subject matter, perhaps by 

inadvertence, there has arisen the situation illustrated in 

this appeal, where the same issue can be finally adjudicated to different appellate outcomes, depending on the 

tribunal from which it came. This distortion appears to 

be related to misunderstanding of the role of “broadest 

reasonable interpretation” in patent examination. Thus I 

write to encourage remedial attention, for the resulting 

uncertainty is no less pernicious than the intercircuit 

conflicts of thirty years past. I agree with Judge Plager’s 

analysis of this situation, in his “Additional Views” herewith, but I am impatient with the absence of resolution of 

the conflicts that have arisen. 

The “broadest reasonable interpretation” is an examination protocol, not a rule of law. In its implementation, 
5 FLO HEALTHCARE v. KAPPOS

the examiner starts with a blank slate on which the 

applicant has described the subject matter he wishes to 

patent. The examiner is charged with searching the 

entire world knowledge, and to decide what the applicant 

is entitled to claim, as a matter of law. See Manual of 

Patent Examining Procedure §706 (“After the application 

has been read and the claimed invention understood, a 

prior art search for the claimed invention is made.”). In 

this demanding process, the examiner views the applicant’s presentation broadly, in order to assure that all 

possibly relevant prior art is explored. That is the role of 

“broadest reasonable interpretation”: it is an examination 

tool whereby the applicant and the examiner work together to determine and define the “invention” to be 

claimed. 

The PTO examination is charged with assuring that 

the patent complies with the law, objectively and correctly. If the applicant disagrees with the outcome and 

takes the PTO decision to judicial review, the court again 

applies the law, objectively and correctly. It is irrelevant 

by what path the examiner and the applicant reached 

their final resolution; that resolution is judicially reviewed for correctness in law. Similarly when patentability is challenged in litigation, the patent grant is 

judicially reviewed for correctness in law. Questions of 

law receive de novo determination, however the questions 

reach the court. 

The “broadest reasonable interpretation” applies to 

the initial consideration of patentability, not to the final 

decision. This protocol was discussed in Application of 

Kebrich, 201 F.2d 951, 954 (CCPA 1953) (“the tribunals 

[of the Patent Office] and the reviewing courts in the 

initial consideration of patentability will give claims the 

broadest interpretation which, within reason, may be 

applied.”). The purpose has often been explained: 
FLO HEALTHCARE v. KAPPOS 6

[D]uring patent prosecution when claims can be 

amended, ambiguities should be recognized, scope 

and breadth of language explored, and clarification imposed. The issued claims are the measure 

of the protected right. 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 re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (internal 

citations omitted). 

There are traditional differences in the placement of 

the burdens of production and proof, in PTO examination 

and in litigation. The burden of proof in litigation takes 

cognizance of the patent examination conducted by an 

expert agency, but this does not dilute the requirement 

that questions of law must be decided objectively and 

correctly. This standard methodology is outlined in TI 

Group Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., 

375 F.3d 1126, 1139 (Fed. Cir. 2004): “Our validity analysis is a two-step procedure: ‘The first step involves the 

proper interpretation of the claims. The second step 

involves determining whether the limitations of the 

claims as properly interpreted are met by the prior art,’” 

quoting Beachcombers, Int'l, Inc. v. WildeWood Creative 

Prods., Inc., 31 F.3d 1154, 1160 (Fed. Cir. 1994). Whether 

the PTO used a “broadest reasonable interpretation” in 

examining the application is irrelevant. 

Although the internal procedures of administrative 

and litigating tribunals are historically different, for 

questions of law the decision must be correct. For Federal 

Circuit review of patentability the criterion is correctness, 

whether initially decided in the district courts, the Patent 
7 FLO HEALTHCARE v. KAPPOS

and Trademark Office, the International Trade Commission, or the Court of Federal Claims. Thus on appeal from 

the PTO to the Federal Circuit, the court reviews the 

PTO’s decision for correctness, “just as we review claim 

construction by a district court.” In re Baker Hughes Inc., 

215 F.3d 1297, 1301 (Fed. Cir. 2000). These procedures 

have become beclouded, as in In re Morris, 127 F.3d 1048 

(Fed. Cir. 1997), where this court stated the question as 

whether the PTO's interpretation of disputed claim language was “reasonable.” Id. at 1055. Still, this court 

decided whether Morris was entitled to the requested 

claim scope as a matter of objective law, on de novo review 

of the PTO’s decision. 

The same rules apply on review of reexamination as 

on initial examination, as the PTO observed with respect 

to the Flo Healthcare claims herein. It remains the rule 

that “[o]bviousness under section 103 is a question of law 

that this court reviews de novo,” and “claim construction, 

when, as here, there are no underlying factual issues, is 

also a question of law that we review de novo.” In re 

Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994). The 

Donaldson court held that on reexamination “the PTO 

erred in its construction [of the claims] and this error 

consequently led the PTO to impose an improper obviousness rejection.” Id.

In the reexamination appeal now before us, the PTO 

states in its brief that “During reexamination – as in ex 

parte prosecution – claims are given their broadest reasonable interpretation consistent with the specification . . 

.” That is correct. However, the PTO then advises: “Thus, 

this Court reviews the USPTO’s interpretation of disputed claim language to determine whether it is ‘reasonable’ in light of the specification.” That is incorrect. It is 

incorrect to convert a search and examination expedient 

into a requirement of appellate deference. I again remind 
FLO HEALTHCARE v. KAPPOS 8

us of the problems the Federal Circuit was designed to 

remedy: 

[T]here are areas of the law in which the appellate 

courts reach inconsistent decisions on the same 

issue, or in which—although the rule of law may 

be fairly clear—courts apply the law unevenly 

when faced with the facts of individual cases. . . . 

merger of the Court of Claims and the Court of 

Customs and Patent Appeals addresses these 

problems. 

S. Rep. 96-304, at 9 (1979). This purpose requires the 

establishment of uniform law, and its correct application.