In Re Alberto Lee Bigio

381 F.3d 1320, 72 U.S.P.Q. 2d (BNA) 1209, 2004 U.S. App. LEXIS 17981, 2004 WL 1878752
CourtCourt of Appeals for the Federal Circuit
DecidedAugust 24, 2004
Docket03-1358
StatusPublished
Cited by64 cases

This text of 381 F.3d 1320 (In Re Alberto Lee Bigio) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In Re Alberto Lee Bigio, 381 F.3d 1320, 72 U.S.P.Q. 2d (BNA) 1209, 2004 U.S. App. LEXIS 17981, 2004 WL 1878752 (Fed. Cir. 2004).

Opinions

Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit Judge NEWMAN.

RADER, Circuit Judge.

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

I.

Bigio’s patent application claims a hair brush. This claimed hair brush features an allegedly unique shape, namely an hourglass configuration for both the bristle substrate and the overall bristle array. [1323]*1323Figure 1 depicts a preferred embodiment of the claimed hair brush:

[[Image here]]

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

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

(phrasing and emphases added).

The examiner rejected claim 1 of Bigio’s application as obvious in view of British Patent No. 17,666 (Flemming) in combination with either U.S. Design Patent No. 424,303 (Tobias) or U.S. Design Patent No. 140,438 (Cohen). Flemming, Tobias, and Cohen each claim a particular configuration for a toothbrush. On appeal, the Board rejected Bigio’s interpretation of “hair brush” as limited to brushes only for scalp hair. Instead, the Board broadly construed “hair brush” to encompass “not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal [1324]*1324bodies (e.g. human facial hair, human eyebrow hair, or pet hair).” Bigio, slip op. at 4.

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

II.

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

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

III.

Bigio’s challenge to the Board’s determination that the toothbrush references are analogous art requires this court to review the Board’s construction of the disputed claim term “hair brush.” Cf. In re Paulsen, 30 F.3d 1475, 1479 (Fed.Cir.1994) (“[T]o properly compare the [prior art] reference with the claims at issue, [this court] must construe the [disputed] term ... to ascertain its scope and meaning.”).

As discussed above, the PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution. Hyatt, 211 F.3d at 1372. The “broadest reasonable interpretation” rule recognizes that “before a patent is granted the claims are readily amended as part of the examination process.” Burlington Indus. v. Quigg, 822 F.2d 1581, 1583 (Fed.Cir.1987). Thus, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application. In re Prater, 56 C.C.P.A. 1381, 415 F.2d 1393, 1404-05 (1969). Additionally, the broadest reasonable interpretation rule “serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.Cir.2004) (quoting In re Yamamoto, 740 F.2d 1569, 1571-72 (Fed.Cir.1984)).

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

[1325]*1325In examining the term “hair brush,” the Board correctly declined to import from the specification a limitation that would apply the term only to hairbrushes for the scalp.

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381 F.3d 1320, 72 U.S.P.Q. 2d (BNA) 1209, 2004 U.S. App. LEXIS 17981, 2004 WL 1878752, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-alberto-lee-bigio-cafc-2004.