A common but generic characteristic shared by a claim element and a prior art element does not support even a broadest reasonable interpretation that one can be the other. Here, for example, a “spine” and a “side panel” of a TV console were found to be distinct even though both reach from the ground to the top of the console. “That suggestion is fallacious: it employs a version of the fallacy of the undistributed middle, under which the two statements, ‘a dog is a four-legged pet’ and ‘a cat is a four-legged pet,’ are asserted to give rise to the inference that a dog is a cat.” This would be a good case to consult and cite in response to an asserted broadest reasonable interpretation predicated on generic rather than defining characteristics of a claim element.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to a set of pieces including a “spine” for mounting a TV in different configurations with respect to a console (stand). The claims recite that the spine “form[s] a structural component of [the] console assembly,” but do not further elaborate on “spine.” The prior art discloses a console with various “side panels” that form the base of the console.
Issue(s): Whether the Board’s construction allowing the claimed “spine” to be a leg or side panel of the console is unreasonably broad.
Holding(s): Yes. “We conclude, based on the ordinary-language meaning and the specification’s contrast between a spine and side panels, that the Board’s construction allowing the spine to be a leg or side panel of the console is unreasonably broad.” The court took particular issue with the PTO’s assertion that because the specification describes “a short spine in one embodiment as reaching from the ground to the top of the console … [and] a side panel does the same, the Director suggests, a side panel can be a spine. That suggestion is fallacious: it employs a version of the fallacy of the undistributed middle, under which the two statements, ‘a dog is a four-legged pet’ and ‘a cat is a four-legged pet,’ are asserted to give rise to the inference that a dog is a cat. A common characteristic of a spine and a side panel does not allow a conclusion that one can be the other.”