In re Wheeler (Fed. Cir. 2008) (non-precedential).
Wheeler’s patent application covers a fishing pole with an illuminated transparent rod. A light in the handle illuminates the whole rod. The BPAI found the invention anticipated by another illuminated fishing rod patent. On appeal, however, the Federal Circuit reversed.
The difference is one of claim construction. The BPAI held that the claim only required a portion of the rod be illuminated, but the Federal Circuit interpreted the claims to require that the entire rod be illuminated. Since the prior art only disclosed a partially illuminated rod, the question of anticipation turned on this claim construction issue.
PTO Claim Construction: As with district court decisions, BPAI claim construction decisions are reviewed de novo on appeal. However, the law of claim construction allows the PTO to construe claims much more broadly than would a district court. In particular, during prosecution, claims are given their “broadest reasonable interpretation to facilitate precision in claiming.” Of course, even at the PTO “claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.”
Here, Wheeler’s patent claims “an illuminated fishing pole…made from a transparent, flexible material.” The specification also states that the entire fishing rod is transparent and lighted along its length. Applying its interpretation, the Federal Circuit found that the claim required that the entire rod be transparent and lit. Because that limitation was not found in the prior art, the claim is considered novel.