USPTO Claim Language Interpretation: Must be “Reasonable” in Light of All the Evidence

In Re Michael C. Scroggie (Fed. Cir. March 13, 2006) (NONPRECEDENTIAL)

by Joseph Herndon

In a non-precedential opinion, the Fed. Cir. affirmed in part and reversed in part a decision of the USPTO Board of Patent Appeals (the “Board”). Mr. Scroggie appealed the Board’s decision affirming a final rejection of his patent application having claims directed to a method for generating a web page (including the limitations “generating page data” and “personalized web page”).

The Fed. Cir. stated the general principle that since during prosecution, claims “must” be given their “broadest reasonable interpretation,” this court reviews the Board’s interpretation of disputed claim language to determine whether it is “reasonable” in light of all the evidence before the Board.

Scroggie argued that a hyper-link is not a web page, but rather a logical address that when selected, directs the user to a known web page. The Fed. Cir. agreed and held that the term “generating page data,” as recited in the claims, requires that page data is “generated,” not merely “selected.” The court stated that the asserted prior art, which teaches “selecting” advertisements that contain hyper-links, does not teach or suggest “generating.” Thus, the Fed. Cir. held that the Board’s construction of “generating page data” was unreasonable and its conclusion that the prior art teaches that limitation was unsupported by substantial evidence.

On another note, the court further held that a web page may be considered “personalized” because (i) the contents of the page transmitted to the user are themselves specific to the user, or (ii) the page was chosen to be transmitted to a user based on the user’s personal data. In this case, the court noted that because the term “personalized web page” can reasonably be construed to mean either type of “personalized,” and because the prior art discloses the latter type, the claims including this limitation were reasonably interpreted by the Board and its conclusion that the prior art teaches this limitation was validly supported by substantial evidence.

The Fed. Cir. did not elaborate on any requirements for the Board to meet the “reasonable interpretation” requirement, or the amount of evidence that would be sufficient to do so.

Note: Joseph Herndon is an assiciate at the intellectual property firm of McDonnell Boehnen Hulbert & Berghoff.  Joe has a stellar background in electrical engineering and handles both patent prosecution and litigation.