Having corrected the examiner's claim construction, however, the Board erred by relying on factual findings resting on that incorrect claim construction. In its opinion, the Board states “we agree with Patent Owner that the combination of prior art does not result in a lighting apparatus that is ‘inert to light’ when the term is properly construed. In this regard, the Examiner expressly found that each of the primary references ... lacks this claimed feature.” J.A. 15–16.
The Board's reasoning is deficient.
The Board states that the prior art references do not disclose the “inert to light” limitation as properly construed, but only cites to the examiner's findings under the reversed—and substantially different—claim construction.
On remand, the PTO will have the opportunity to make new factual findings under the proper construction.
Tempo Lighting, Inc. v. Tivoli, LLC, 2013-1140, 2014 WL 503128 (Fed. Cir. Feb. 10, 2014) (section breaks added for clarity).
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