{"id":1999,"date":"2018-02-12T15:04:12","date_gmt":"2018-02-12T20:04:12","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1999"},"modified":"2018-03-26T09:33:25","modified_gmt":"2018-03-26T13:33:25","slug":"boards-construction-of-the-claims-was-unreasonably-broad-and-inconsistent-with-the-specification","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1999","title":{"rendered":"Board’s Construction of the Claims was Unreasonably Broad and Inconsistent with the Specification"},"content":{"rendered":"

In In re Hodges<\/a>, [2017-1434] (February 12, 2018), the Federal Circuit\u00a0reversed the Board\u2019s anticipation determinations, vacate
\nits obviousness determinations, and remand for further
\nproceedings.\u00a0 The\u00a0application is directed to a valve assembly
\nfor draining contaminants, condensation, and other\u00a0fluids that adversely affect the efficiency and function of a\u00a0pressurized system.<\/p>\n

The Federal Circuit found that the Board\u2019s Finding that the claims were anticipated was\u00a0unsupported by substantial evidence.\u00a0\u00a0A prior art reference anticipates a patent\u2019s claim when\u00a0the four corners of the document \u201cdescribe every element\u00a0of the claimed invention, either expressly or inherently,\u00a0such that a person of ordinary skill in the art could practice\u00a0the invention without undue experimentation.\u00a0 At issue was the positioning of a valve in the prior art relative to the claimed invention.\u00a0 The Board found the positioning “similar,” but the Federal Circuit found that\u00a0the Board neither supported its assertion of
\nsimilarity, nor explained how the positioning of the\u00a0valve in the prior art would enable\u00a0a skilled artisan to \u201cpractice the invention without
\nundue experimentation.\u201d<\/p>\n

As to anticipation by another reference, the Board affirmed a rejection that a piston stem and piston head\u00a0collectively constitute the claimed\u00a0\u201csensor\u201d because they sense pressure insofar as they move\u00a0in response to the pressure applied thereto.\u00a0 The Federal Circuit noted that\u00a0the Patent Office did\u00a0not attempt to defend this finding on appeal “for good reason” as the Board\u2019s\u00a0anticipation finding was predicated on an erroneous construction\u00a0of \u201csignal,\u201d and the reference did not disclose a sensor.\u00a0 The Federal Circuit found the Board construction of the claims to be unreasonably broad and inconsistent with the specification.\u00a0 The Federal Circuit said that under any reasonable construction of \u201csignal,\u201d
\nthe prior art’s piston stem and head combination cannot fairly
\nbe characterized as a sensor that generates a signal.\u00a0 The Federal Circuit reversed the rejection, not wanting to give the Patent Office “a second chance to reject the claims\u00a0on grounds that it is unwilling or unable to defend on\u00a0appeal.”<\/p>\n

On the obviousness rejections, the Board concluded in a “single paragraph” that the claims would have been obvious, but did not explain how the reference could be modified.\u00a0 The Federal Circuit also noted that the Board made no findings on any of the Graham factors.\u00a0 The Federal Circuit said that the Board must\u00a0\u201cexplicate its factual conclusions, enabling us to\u00a0verify readily whether those conclusions are indeed supported\u00a0by \u2018substantial evidence\u2019 contained within the\u00a0record,\u201d but that the Board failed to do so, so the Federal Circuit remanded the case.<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In In re Hodges, [2017-1434] (February 12, 2018), the Federal Circuit\u00a0reversed the Board\u2019s anticipation determinations, vacate its obviousness determinations, and remand for further proceedings.\u00a0 The\u00a0application is directed to a valve assembly for draining contaminants, condensation, and other\u00a0fluids that adversely affect … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[42,22,12],"tags":[],"class_list":["post-1999","post","type-post","status-publish","format-standard","hentry","category-anticipation","category-bri","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1999","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1999"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1999\/revisions"}],"predecessor-version":[{"id":2000,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1999\/revisions\/2000"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1999"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1999"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1999"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}