THE PATENT OFFICE MUST APPLY BROADEST REASONABLE INTERPRETATION OF CLAIMS UNDER EXAMINATION

In Re Wheeler, [2008-1215 (Serial No. 10/899,352)] (December 19, 2008) NON-PRECEDENTIAL [NEWMAN, Mayer, Lourie] The Federal Circuit reversed the anticipation rejection of claims to a lighted, transparent fishing pole.
DISCUSSION: The claims were directed to a transparent lighted fishing pole with a light source in the handle to illuminate the pole. The claims were rejected over a reference showing a light at the tip of the fishing pole. The Patent Office took the position that the claims did not explicitly require that the entire length of the pole be transparent. The Federal Circuit held that although claims during examination are given their broadest reasonable interpretation in order to facilitate precision in claiming, that interpretation must be “consistent with the specification, [and] claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." All may not be well for Mr. Wheeler, as the Federal Circuit explicitly noted that it was constrained to consider the Patent Offices action, and could not substitute its own judgement, suggesting that another rejection is in his future.