Appeal 2006-3235
Reexamination Control No. 90/006,696
1 expired pursuant to 37 CFR § 1.530(d) (1986) (“No amended or new claims
2 may be proposed for entry in an expired patent. Moreover, no amended or
3 new claims will be incorporated into the patent by certificate issued after the
4 expiration of the patent.”). Citing that provision, the Board held on
5 rehearing that
6 in reexamination proceedings in which the PTO is considering
7 the patentability of claims of an expired patent which are not
8 subject to amendment, a policy of liberal claim construction
9 may properly and should be applied. Such a policy favors a
10 construction of a patent claim that will render it valid, i.e., a
11 narrow construction, over a broad construction that would
12 render it invalid. See Roberts Dairy Co. v. United States,
13 530 F.2d 1342, 1367, [182 USPQ 218, 234] (Ct. Cl. 1976). See
14 also, ACS Hosp. Systems, Inc. v. Montefiore Hosp., [732 F.2d
15 1572,] 1577, [221 USPQ 929, 932 (Fed. Cir. 1984)]).
16 Papst-Motoren, 1 USPQ2d at 1656.18
17
18
19
18 However, Phillips, 415 F.3d at 1327, 75 USPQ2d at 1336-37
explains that
[w]hile we have acknowledged the maxim that claims should be
construed to preserve their validity, we have not applied that
principle broadly, and we have certainly not endorsed a regime
in which validity analysis is a regular component of claim
construction. See Nazomi Communications [Inc. v. ARM
Holdings, PLC], 403 F.3d [1364,] 1368-69 [74 USPQ2d 1458,
1461 (Fed. Cir. 2005)]. Instead, we have limited the maxim to
cases in which “the court concludes, after applying all the
available tools of claim construction, that the claim is still
ambiguous.” Liebel-Flarsheim [Co. v. Medrad, Inc.], 358 F.3d
[898,] 911 [69 USPQ2d 1801, 1811 (Fed. Cir. 2004)] [other
citations omitted].
10
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