Claims Must Be Given Broadest Reasonable Construction Consistent with the Specification

In re Icon Health and Fitness, Inc., [2006-1573] (August 1, 2007) [PROST, Mayer, Schall] The Federal Circuit affirmed the BPAI's decision holding Icon claims unpatentable as obvious.
BRIEF: Icon sought reexamination of its U.S. Patent No. 5,676,624 on a treadmill with a folding base. LOF: The Board’s determination that a prior art reference is analogous art also presents an issue of fact, reviewed for substantial evidence. The Patent Office must give claims their broadest reasonable construction consistent with the specification. A broad construction during prosecution creates no unfairness to the applicant because the applicant may amend the claims to narrow their scope. Because Icon did not amend its claims, it must submit to the Board's broad claim construction. Icon argued that a reference to a folding bed was not analogous to folding treadmills. While the Federal Circuit agreed that the reference was from a different field, the Federal Circuit found that the references addressed the same problem. As the Supreme Court said in KSR, familiar items may have obvious uses beyond their primary purposes. Having found the reference to be analogous art, the Federal Circuit then discussed whether the combination was obvious, noting that one skilled on the art would naturally look to prior art addressing the same problem as the invention at hand, and in this case would find an appropriate solution. The Federal Circuit found that the striking similarity between the application and the reference illustrates the similarity of the problems they address and solutions to that problem, further supporting the idea that a person of ordinary skill in the art would combine the references. The Federal Circuit rejected Icon's argument that the reference taught away from the invention because it employed different types of springs which would not work in the claimed invention. The Federal Circuited noted that a reference can teach away in two situations: (1) where it would discourage following the path set forth in the reference, or would lead to a different path than taken by the inventor, or (2) where use of the reference would render the result inoperable. The Federal Circuit found that Icon might have a point with respect to narrower claims, but the reference did not teach away from the broad claims at issue. Regarding inoperability, the Federal Circuit noted that it does not "ignore the modifications that one skilled in the art would make to a device borrowed from the prior art", finding that a person of ordinary skill in the art would properly size the components. The Federal Circuit agreed that the broad claims at issue were obvious from the prior art.
TIP: If you must identify the problem solved by the invention, do so only in terms of the ultimate problem solve, and not the specific solution, which might invite the application of art from other fields.