In Re Wheeler (08-1215)
Gary Wheeler applied for a patent directed to an illuminated transparent fishing pole. As specified in claim 1 of Wheeler’s application, the elongated fishing pole is made from a transparent, flexible material with a light source projecting light through the pole.
The Patent Office rejected claim 1 of Wheeler’s patent application as being anticipated by U.S. Patent No. 5,644,864 to Kelly. In Kelly, a transparent flexible illuminated fishing pole is not shown. Instead, the fishing pole has a light bulb attached at the tip of the pole, connected by wires to the handle. Nevertheless, the Patent Office found “the term ‘elongated fishing pole being made from a transparent, flexible material’ does not require the entire rod to be made from a transparent, flexible material or to emit light along its entire length.” (emphasis added).
On appeal the Federal Circuit found the Patent Office’s determination to be “inaccurate, for Wheeler’s specification and claim 1 state that the entire rod is transparent and flexible and illuminated.” (emphasis added). In particular, “[a]lthough claims during examination are given their broadest reasonable interpretation in order to facilitate precision in claiming, that interpretation must be ‘consistent with the specification, [and] claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” citing In re Bond, 910 F.2d 831,833 (Fed. Cir. 1990). Here, although not specifically stated in claim 1 of Wheeler’s patent application, the “specification states that the entire fishing rod is transparent and is lighted along its length, and claim 1 so requires.”