                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                      2008-1215
                               (Serial No. 10/899,352)




                         IN RE GARY EDWARD WHEELER




      Appeal from the United States Patent and Trademark Office, Board of
      Patent Appeals and Interferences.




      Brent A. Capehart, Bowers Law firm, of Harrison, Arkansas, for the appellant
Gary Edward Wheeler.

       Raymond T. Chen, Acting Solicitor, United States Patent & Trademark Office, of
Arlington, Virginia, for the appellee Jon W. Dudas, Director, Patent and Trademark
Office. On the brief were Joseph G. Piccolo and Nathan K. Kelley, Associate Solicitors.


Appealed from: United States Patent and Trademark Office, Board of Patent Appeals
               and Interferences
                      NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit


                                       2008-1215
                                (Serial No. 10/899,352)



                          IN RE GARY EDWARD WHEELER




Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.
                         ___________________________

                            DECIDED: December 19, 2008
                           ___________________________


Before NEWMAN, MAYER, and LOURIE Circuit Judges.


NEWMAN, Circuit Judge.

      Gary E. Wheeler (“Wheeler”) appeals the decision by the Board of Patent

Appeals and Interferences, rejecting claims 1 through 5, all the claims of Wheeler’s

patent application, on the ground of anticipation, 35 U.S.C. §102. 1 We reverse the

rejection on the ground of anticipation and remand for appropriate further proceedings.

The invention

      The Wheeler invention is an illuminated transparent fishing pole, wherein a light

source in the handle projects light through and illuminates the length of the pole. In an


      1
             In re Wheeler, No. 2007-0823 (Bd. Pat. App. Interf. March 28, 2007)
adhered to on reh’g Nov. 20, 2007.
embodiment claimed in claim 5, a reflective material is placed near the free end of the

lighted pole, in order to facilitate light transmission when the rod is bent by the pull of a

fish. Claims 1 and 5 follow:

       1. An illuminated fishing pole comprising:
              an elongated hollow fishing rod having a free end and a fixed end,
       said elongated fishing pole being made from a transparent, flexible
       material;
              an elongated hollow handle having a forward end secured to the
       fixed end of said rod, and a butt end; and
              a light source contained within said elongated hollow handle
       projecting light toward and through said elongated hollow fishing rod.

       5. The illuminated fishing pole of claim 1 wherein said elongated hollow
       fishing rod further comprises a reflective material being located along the
       interior side of its walls and proximate said free end of the fishing rod to
       facilitate the illumination of said rod when the rod is bent due to pull by a
       fish.

It was agreed that claims 2-4 stand or fall with claim 1.

       The Board, in a split decision, held that claim 1 is anticipated by U.S. Patent No.

5,644,864 to Kelly, and that claim 5 is anticipated by U.S. Patent No. 5,347,741 to

Konrad.    Anticipation is a question of fact, and the Board’s findings thereon are

reviewed to determine whether they are supported by substantial evidence. See e.g., In

re Berger, 279 F.3d 975, 980 (Fed. Cir. 2002). To the extent that the Board’s decision

requires interpretation of the scope and meaning of the claims or any terms thereof,

“claim construction” is a matter of law, and is reviewed de novo on appeal. See Cybor

Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998).

Claim 1

       Wheeler argues that claim 1 cannot be anticipated by the Kelly reference, for

Kelly does not show a transparent flexible illuminated pole. The Kelly fishing pole has a

light bulb attached at the tip of the pole, connected by wires to the handle. Although the



2008-1215                                    2
Board recognized that the Kelly pole is not transparent and is not illuminated except for

the tip, the Board held that “the term ‘elongated fishing pole [sic: rod] 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” (brackets in original).

That is inaccurate, for Wheeler’s specification and claim 1 state that the entire rod is

transparent and flexible and illuminated. J.A. 61, 63.

       Although 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." In re Bond,

910 F.2d 831, 833 (Fed. Cir. 1990); see also Phillips v. AWH Corp., 415 F.3d 1303,

1313 (Fed. Cir. 2005) (“[T]he ordinary and customary meaning of a claim term is the

meaning that the term would have to a person of ordinary skill in the art in question.”).

The Wheeler specification states that the entire fishing rod is transparent and is lighted

along its length, and claim 1 so requires.

       On this appeal the PTO argues that Wheeler’s rod is not necessarily transparent

along its entire length because obstructions such as line guides or reflective material

can be placed in or on the rod, thereby interrupting the transparency. However, the

ground of rejection is “anticipation,” and it is clear that Kelly does not show the Wheeler

pole, even if the transparency is interrupted, for the Kelly pole is illuminated only at the

tip and handle. See Akzo N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471,

1479 (Fed. Cir. 1986) (“anticipation requires that each and every element of the claimed

invention is described in a single reference.”).          The rejection of claims 1-4 for




2008-1215                                      3
anticipation by Kelly is not supported by substantial evidence, and is reversed.

Claim 5

       Claim 5 is directed to the illuminated fishing pole of claim 1 with the addition of

reflective material “proximate [the] free end”. Wheeler explains that the purpose is to

facilitate illumination when the end of the rod is bent by the pull of a fish, by reflecting

the light within the rod. J.A. 63, Claim 5 (requiring the placement of reflective material in

such a manner as to “facilitate illumination of [the] rod when [the] rod is bent due to the

pull by a fish.”).

       Claim 5 was rejected for anticipation by the patent to Konrad, which shows a

hollow translucent fishing rod that has reflective paint over its entire length “except

adjacent to the tip.” Konrad, col. 1, ll. 59-66. The Board construed claim 5 as not

limiting the reflective paint to proximate the free end, and held that claim 5 is anticipated

by Konrad. However, the Konrad rod is coated with reflective paint except for the free

end and the handle, whereas Wheeler’s claim 5 only requires that the reflective paint is

“proximate [the] free end.” Wheeler’s reflective paint is placed in the area from which

Konrad excludes the reflective paint.      This is a significant difference.     Substantial

evidence does not support the Board’s ruling that claim 5 is anticipated by Konrad.

       Our appellate review is limited to the grounds relied on by the agency. See SEC

v. Chenery Corp., 332 U.S. 194, 196 (1947) (“[A] reviewing court, in dealing with a

determination or judgment which an administrative agency alone is authorized to make,

must judge the propriety of such action solely by the grounds invoked by the agency. If

those grounds are inadequate or improper, the court is powerless to affirm the

administrative action by substituting what it considers to be a more adequate or proper




2008-1215                                    4
basis.”).

       The decision of the Board, rejecting Wheeler’s claims on the ground of

anticipation, is reversed. The case is remanded for further proceedings.




2008-1215                                  5
