11/15/16

In Re: Lawrence Everatt Anderson, No. 2016-1156, 2016-11-57 (Fed. Cir. 2016)


Michael B. Pierorazio

In re: Lawrence Everatt Anderson,

http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1156.Opinion.10-11-2016.1.PDF

The Federal Circuit holds that “the speed being displayed on the display for use by a motorist in determining a route of travel” is a non-limiting statement of intended use because the “‘for use’ language does not add a structural limitation to the claimed system or method.”

Lawrence E. Anderson filed related U.S. Patent Applications 13/214,202 and 13/189,505 which are each both devices and methods for monitoring vehicular traffic using first “fixedly positioned” detectors which transmit data to a second device “for use by motorists in determining a route of travel.” The ‘202 application specifically claims two photodetectors that measure the speed of passing vehicles and the ‘505 application claims detectors that “detect[] the passage of a vehicle”. The Examiner rejected the ‘202 application under § 103(a) as obvious over U.S. Patent Application Publication 2007/0208506 (“Macneille”) in view of U.S. Patent 6,750,787 (“Hutchinson”) noting that the “for use by a motorist in determining a route of travel” clause did not add patentable weight to the claims. The Examiner rejected the ‘505 application under § 103(a) as obvious over Macneille in view of U.S. Patent Application Publication 2011/0095908 (“Nadeem”). Anderson appealed the final rejection of the ‘202 application to the Board arguing that Macneille in view of Hutchinson failed to teach all limitations and that the Examiner failed to properly reject the “for use” clause. Anderson appealed the final rejection of the ‘505 application to the Board arguing that Macneille alone or the combination of Macneille and Nadeem failed to teach all limitations.

The Board affirmed the Examiner in both applications because they determined that all limitations were obvious in light of the prior art. Further, the Board noted that all of the “for use by motorists” clauses were non-limiting statements of intended use. The United States Court of Appeals for the Federal Circuit now decides whether the Board’s conclusions regarding claim interpretation were correct.

In the ‘202 application Anderson argues that the Board erred in construing “for use by motorists in determining a route of travel” as a non-limiting statement of intended use and that Hutchinson does not teach this limitation. Anderson further argues that the Board erred by incorporating the Examiner’s “intended use” construction because, as Anderson alleges, this was a new ground of rejection from the Examiner’s answer. The Federal Circuit determined that the “for use” clause was a non-limiting statement of intended use because “[t]he ‘for use’ language does not add a structural limitation to the claimed system or method.” (*10). Further, that even if the “for use” clause was interpreted as limiting then Macneille teaches this limitation. Lastly, once Anderson wrote his reply brief, instead of petitioning the Director to address the alleged new grounds of rejection, Anderson waived his right to potentially have the Director reopen prosecution. The Federal Circuit lacks jurisdiction for administrative issues such as a new ground of rejection in an Examiner’s answer which are otherwise best handled by the Examiner’s Director and Anderson’s reply brief ensured he had a full opportunity to respond to the merits of the Examiner’s argument.

In the ‘505 application Anderson argues that the Board erred in affirming the Examiner’s rejections. The Federal Circuit affirmed the board determining that the Board’s decision of obviousness were based on factual findings supported by substantial evidence.

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