In Re Sp Controls, Inc. ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Reexamination No. 90/007,802)
IN RE SP CONTROLS, INC.
__________________________
2011-1119
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences
_________________________
Decided: December 21, 2011
_________________________
MICHAEL E. DERGOSITS, Dergosits & Noah, LLP, of
San Francisco, California, argued for appellant.
ROBERT J. MCMANUS, Associate Solicitor, Office of the
Solicitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for appellee. With him on
the brief were, RAYMOND T. CHEN, Solicitor and WILLIAM
LAMARCA, Associate Solicitor.
__________________________
Before PROST, SCHALL, and MOORE, Circuit Judges.
IN RE SP CONTROLS 2
SCHALL, Circuit Judge.
DECISION
SP Controls, Inc. (“SP Controls”) appeals the August
18, 2009 decision of the Board of Patent Appeals and
Interferences (“Board”) affirming the Examiner’s rejection
of all claims of SP Controls’ U.S. Patent No. 6,137,794(“'794 patent”) in an ex parte reexamination proceeding.
Ex parte SP Controls, Inc., No. 2009-6008, 2009 WL
2573973 (B.P.A.I. Aug. 18, 2009) (“Board Decision”). We
affirm.
DISCUSSION
I.
The '794 patent is directed to an apparatus for con-
trolling the input to another device. For example, one of
the preferred embodiments describes a device for control-
ling the input to an audio-visual projector. '794 patent
col.2, ll.32-46. The patent has one independent claim and
five dependent claims. Independent claim 1 recites:
A device control apparatus capable of controlling
connection of any selected one of at least two
input devices to a controllable device, said
apparatus comprising:
input device selection keys, each of the selection
keys corresponding to one of the input de-
vices;
control circuitry coupled to the input device selec-
tion keys, configured to be coupled to switch-
ing circuitry, and configured to assert a
different input device selection signal to the
switching circuitry in response to actuation of
each of the selection keys to cause the switch-
ing circuitry to connect the controllable de-
3 IN RE SP CONTROLS
vice to a corresponding one of the input de-
vices;
a set of light sources, including a controllable light
source for each of the input device selection
keys;
a frame to which the control circuitry and the
keys are mounted, wherein the frame has
slots extending through said frame for receiv-
ing labels, and each of the slots is positioned
between one of the light sources and one of
the input device selection keys; and
labels mounted over the slots, each of said labels
comprising transparent material marked
with a legend identifying one of the input de-
vices.
'794 patent col.9, l.13-col.10, l.6.
On November 9, 2005, RGB Systems, Inc., dba Extron
Electronics, filed with the Patent and Trademark Office
(“PTO”) a request for ex parte reexamination of the '794
patent. The PTO granted the request, and on October 1,
2007, the Examiner rejected claims 1 and 4-6 of the
patent as obvious over Sony PC 1270 Switcher Service
Manual (“Sony”) in view of Extron System 8/10 Manual
(“Extron”). Reexamination No. 90/007,802, Rejection at 2-
4 (Oct. 1, 2007). The Examiner rejected claims 2 and 3 of
the patent as obvious over Sony in view of Extron and
further in view of U.S. Patent No. 4,683,360 (“'360 pat-
ent”). Id. at 5. SP Controls appealed to the Board, which
affirmed the Examiner’s rejection. Board Decision. After
the Board denied rehearing, Ex parte SP Controls, Inc.,
No. 2009-6008, 2010 WL 3448889 (B.P.A.I. Aug. 31, 2010),
SP Controls appealed to this court. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4).
IN RE SP CONTROLS 4
II.
This case turns wholly on claim construction. That is
because SP Controls concedes that if the Examiner’s
construction of two disputed limitations of claim 1 of the
'794 patent stands, the prior art references render the
patent’s claims obvious.
Giving claim 1 what he determined to be its broadest
reasonable construction, the Examiner construed the
limitation “a frame to which the control circuitry and keys
are mounted, wherein the frame has slots extending
through said frame for receiving labels,” as not requiring
a frame with separate slots for labels and keys. Reexami-
nation No. 90/007,802, Rejection at 8, 11 (Oct. 1, 2007)
(“Rejection”). Likewise, the Examiner construed the
limitation “labels mounted over the slots” as covering
structure in which a label covers a key “under a transpar-
ent cover of the key top, with the key mounted through
the slot, thereby placing the label ‘over the slot.’” Reex-
amination No. 90/007,802, Examiner’s Answer at 24 (Aug.
29, 2008). Based upon his claim construction, the Exam-
iner concluded that the Sony and Extron references
rendered claims 1 and 4-6 of the '794 patent obvious and
that the Sony and Extron references in combination with
the '360 patent rendered claims 2 and 3 obvious. Rejec-
tion at 2-5. Agreeing with the Examiner’s construction of
the disputed limitations, the Board affirmed the rejection
of the '794 patent’s six claims. Board Decision.
III.
SP Controls argues that the Examiner’s construction
of “slots . . . for receiving labels” was unreasonably broad.
In making this argument, it focuses on the '794 patent’s
specification. It points out that, in the specification, there
is no written description reflecting the Examiner’s con-
struction that the claims do not require separate slots for
5 IN RE SP CONTROLS
labels and keys. Pet’r’s Br. 17. It also points out that, in
fact, the specification uniformly shows labels and keys
occupying separate slots. Id. at 18-22. Thus, SP Controls
contends, the specification teaches that the claimed slots
are used for receiving labels only. Id. at 23. SP Controls
also contends that the specification teaches that the
claimed labels are transparent and the keys opaque; thus
the labels would not be backlit if keys were inserted into
the slots as well. Id. at 17-18.
SP Controls argues as well that the Examiner gave an
unreasonably broad construction to the limitation “labels
mounted over the slots.” It urges that the correct con-
struction of this limitation supports its argument that, in
the claimed invention, labels and keys must occupy sepa-
rate slots. Id. at 24. According to SP Controls, it was
error for the Examiner to construe this limitation as
allowing a label to cover a key with the key mounted
through the slot, thereby allowing labels to occupy the
same slots. Id. at 28. SP Controls contends that the only
reasonable construction of the limitation “labels mounted
over the slots” is “labels mounted so as to cover the slots.”
Id. at 24. This construction, it claims, results in a struc-
ture in which labels and keys are in separate slots. Id.The reason is that a label “mounted so as to cover a slot”
cannot do so if the slot also has a key extending from it.
In other words, when the limitation is construed in this
manner, “there is no room in the slot to receive other
objects such as keys.” Id.The PTO responds that the terms “slots . . . for receiv-
ing labels” and “labels mounted over the slots” can rea-
sonably be construed so as to allow the slots to receive
both labels and keys. The PTO argues that claim 1 does
not contain any language limiting the slots to only receiv-
ing labels or requiring that labels “cover” slots. Resp’t’s
Br. 24-27. It also argues that the word “between” in the
IN RE SP CONTROLS 6
limitation “each of the slots . . . positioned between one of
the light sources and one of the input device selection
keys” supports the proposition that the keys also can be in
the “slots . . . for receiving labels.” Id. at 17-18. The PTO
contends that the claim construction urged by SP Controls
improperly attempts to narrow claims to preferred em-
bodiments in the specification. Id. at 19-30.
IV.
We review the Board’s claim construction de novo. In
re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir. 2011) (quot-
ing In re Baker Hughes, Inc., 215 F.3d 1297, 1301 (Fed.
Cir. 2000)). During reexamination, the PTO must give
claims their broadest reasonable construction consistent
with the specification. In re Icon Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). We “thus review[ ]
the PTO’s interpretation of disputed claim language to
determine whether it is ‘reasonable.’” In re Suitco Sur-
face, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In
re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997)).
We turn first to the claims themselves, in order to de-
termine whether there is anything in their language
which limits their reach to a frame in which labels and
keys are in separate slots. See Rapoport v. Dement, 254
F.3d 1053, 1059 (Fed. Cir. 2001). Doing so, we find no
such limitation. Moreover, claim 1 claims “[a] device
control apparatus . . . comprising” enumerated compo-
nents. '794 patent col.9, ll.13-15. “‘Comprising’ is a term
of art used in claim language which means that the
named elements are essential, but other elements may be
added and still form a construct within the scope of the
claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed. Cir. 1997) (quoting In re Baxter, 656 F.2d 679, 686
(CCPA 1981)). Claim 1 recites “slots extending through
said frame for receiving labels” and “labels mounted over
7 IN RE SP CONTROLS
the slots.” '794 patent col.9, l.29–col.10, l.6. Thus, while
“slots . . . for receiving labels” and “labels mounted over
the slots” are essential claim elements, claim 1’s open-
ended “comprising” language on its face does not bar
other elements (i.e., keys) from being placed in the slots.
Indeed, we think the claim language “each of the slots is
positioned between one of the light sources and one of the
input device selection keys,” id. col.10, ll.1-3, allows just
such structure, because it suggests a linear physical
arrangement in which there is a light source and then a
slot containing first a key and second a label.
Neither do we find language in the specification limit-
ing the claims to frames with separate slots for labels and
keys. See, e.g., Rapoport, 254 F. 3d. at 1059-60 (pointing
to a portion of the written description explicitly defining a
particular claim term). While it is true that the embodi-
ments described in the '794 patent’s specification all
disclose structure in which keys and labels are in separate
slots, see '794 patent col.3, ll.58-60; col.5, ll.3-5, 27-30, 57-
61, there is no language in the specification affirmatively
limiting the claims to such embodiments, including such
embodiments with opaque keys. This is significant, for
the law is clear that, absent such language in the specifi-
cation, the claims are not limited to preferred embodi-
ments. See Resonate, Inc. v. Alteon Websystems, Inc., 338
F.3d 1360, 1367 (Fed. Cir. 2003); Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1326-28 (Fed. Cir. 2002). This
is particularly so where, as here, the claims are to be
given their broadest reasonable construction. Cf. In re
Bigio, 381 F.3d 1320, 1324-25 (Fed. Cir. 2004) (cautioning
against reading limitations into the claim from the speci-
fication when applying the broadest reasonable construc-
tion). In short, because the language of claim 1 itself is
not limited to frames with separate slots for labels and
keys, and because the specification does not impose such a
IN RE SP CONTROLS 8
limitation, the Examiner did not err in the construction
he gave to the limitation “slots for receiving labels.”
Finally, we are not persuaded by SP Controls’ argu-
ments relating to the limitation “labels mounted over the
slots.” Again, starting with the claims themselves and
noting the open-ended “comprising” language in the
preamble, we see nothing in the language of claim 1
which bars the Examiner’s construction that the limita-
tion embraces structure in which labels cover keys
mounted through slots. The same is true of the specifica-
tion. Nothing in it limits “labels mounted over the slots”
to structure in which labels cover slots. Thus, the Exam-
iner also did not err in the construction he gave this
limitation.
V.
For the foregoing reasons, we affirm the Board’s deci-
sion sustaining the Examiner’s rejection of claims 1-6 of
the '794 patent.
Each party shall bear its own costs.
AFFIRMED