by Dennis Crouch
Stoller holds several patents directed to a winterizing golf course greens. In particular, Stoller’s approach is to roll-out a rubber blanket over the turf. His most recent patent application was rejected by the USPTO examiner — with the broadest claim being anticipated and the dependent claims obvious. That decision was then affirmed by the PTAB. Now, the Federal Circuit has largely affirmed — finding that the anticipation finding was erroneous but that the obviousness findings were correct. The result then is that on remand the examiner should now also reject the broadest claim as obvious.
The broadest claim requires a layer of polyurethane “laminated” to a fabric layer and the primary dispute on appeal is the broadest reasonable interpretation of laminated clause. The importance of the construction comes up because the prior art uses for the anticipation rejection fastens its layers together by with strings going through a series of grommets at the cover’s perimeter. The USPTO took the position that be broadest reasonable interpretation of a laminated structure would require only that the structure have multiple layers while Stoller argued that laminated requires a fusing or bonding.
The application itself provides no definition of the term but it does provide an example that requires using a molten polymer to bond the layers and repeatedly explains the durability benefits of the laminate approach. [I should note here that I’m hard-pressed to understand how the Court’s broadest reasonable construction is different or any broader than the seemingly more narrow construction that would be used post-issuance.]
On appeal, the Federal Circuit sided with the patent applicant – finding that even a broad dictionary definition of the laminate terms requires “uniting” layers in a way that goes beyond simply stacking them together.
Because the cited anticipation reference did not disclose laminated layers, the rejection was improper. On the other hand, a number of additional references taught laminating in its ‘properly’ construed form and those references were included in the obviousness rejections of the more narrow claims. As such, the court found those obviousness rejections proper.
Thus, we’re left with the odd situation that the broader claim is not rejected while the narrower claims are rejected. Addressing that situation, the Federal Circuit refused to take the logical step of finding the the broader claim obvious as well. Instead, the court simply remanded with – I assume – the expectation that the USPTO will make that determination for itself.
We do not turn a blind eye to the many references in this record that demonstrate that laminating two (or more) layers together was well-known in the art. The only rejection of claim 35 before us, however, is a § 102 rejection based only on Sibbet. That rejection is not supported in the record. Accordingly, we reverse the rejection of claim 35.