In re: Hodges

Editor: Paul Stewart

Federal Circuit Summaries

Before Lourie, O’Malley, and Wallach. Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB’s finding that an element in a prior art reference is “similar to” a claim limitation, without further explanation, is insufficient to support a finding of anticipation.

Kenneth Hodges’ patent application covers an improved drain valve. Claim 1 recites in-part, 1) a valve body that defines an inlet seat, and 2) a sensor that generates a signal. The Examiner rejected this claim as anticipated by two prior art references, or obvious over the combination of the two. For Reference A, the Examiner found that an unlabeled valve had similar positioning and thus inherently disclosed the valve body claimed by Hodges. The Examiner also construed the claimed term “signal,” and determined this term was disclosed by Reference B. The PTAB affirmed.

The Federal Circuit reversed the Board’s anticipation rulings, and vacated the Board’s obviousness ruling. The Federal Circuit determined that the only correct interpretation of Reference A is that the inlet seat in the unlabeled valve is external to the outer casing of the drain valve. Accordingly, the inlet seat could not be defined by the valve body, as required by Claim 1. Also, the PTAB’s finding—that the unlabeled valve in Reference A had a similar position to Hodges’ claimed valve—was insufficient to support a finding of anticipation, without further explanation as to how a skilled artisan could practice the invention without undue experimentation. The Federal Circuit also reversed the Board’s anticipation finding for Reference B. Applying the broadest reasonable interpretation of the term “signal,” the Court held that the Examiner’s construction was unreasonably broad and inconsistent with Hodges’s application. The Federal Circuit vacated the obviousness finding because the Board did not explain its factual conclusions and thus the Court could not review for substantial evidence.

Judge Wallach dissented in part. Judge Wallach concluded that the Federal Circuit exceeded its authority by making unsupported factual findings with regard to Reference A, and should have remanded to the agency for additional investigation or explanation.

This case is: In re: Hodges