The PTO’s claim construction must be sufficiently explicit, at least as to any disputed claim term, in order to enable appellate review. Here, for example, the Board’s refusal to construe the term “threshold value” while nevertheless finding that the prior art did not disclose such a threshold value was found to be improper. “A Board’s findings must be expressed with sufficient particularity to enable [the] court, without resort to speculation, to understand the reasoning of the Board, and to determine whether it applied the law correctly and whether the evidence supported the underlying fact findings.” This would be a good case to consult and cite in making a request for rehearing in response to a vague rejection by the Board.
Background / Facts: The patents on appeal here from a reexamination decision by the PTO are directed to an apparatus that allows a user to listen to music on a portable device and then, when a telephone call is received, to substitute the audio signal from the music device with the audio signal from the phone. In this regard, the claims recite that the substitution is made upon the telephone call signal reaching a “threshold value.” Although declining to construe the term “threshold value,” the PTO held that the prior art did not disclose such a threshold value because “[w]hile [the prior art] discloses stopping an audio signal responsive to receiving a phone call, [the patentee] does not demonstrate that [the prior art] also discloses the signal for the phone call ‘reaching the threshold value.’ In fact, [the prior art] does not appear to disclose a ‘threshold value’ at all.”
Issue(s): Whether the absence of a clear construction of the term “threshold value” violates the requirement that a Board opinion must contain sufficient reasoning to permit appellate scrutiny.
Holding(s): Yes. “We agree with [the third party requestor] that the Board failed to construe ‘threshold value’ in a manner that would permit meaningful appellate review. … The Board erred by failing to construe ‘threshold value’ as it is used in claims 1–6 before finding that [the prior art] failed to disclose a ‘threshold value.’ Without a construction of the term, it is impossible to review the Board’s findings.”