in Re: Thomas Edward Shafovaloff v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1228 Fed. Cir. 2016 . Patent claims are…

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: THOMAS EDWARD SHAFOVALOFF,
Appellant
______________________
2024-1035
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 15/173,604.
______________________
Decided: June 27, 2025
______________________
THOMAS E. SHAFOVALOFF, Scottsboro, AL, argued pro
se.
MAI-TRANG DUC DANG, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Coke Morgan Stewart. Also represented
by ROBERT MCBRIDE, AMY J. NELSON.
______________________
Before TARANTO, STOLL, and STARK, Circuit Judges.
STOLL, Circuit Judge.
Thomas E. Shafovaloff appeals the Patent Trial and
Appeal Board’s decision affirming the examiner’s final re-
jection of all claims in Mr. Shafovaloff’s U.S. Patent
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IN RE: SHAFOVALOFF 2
Application No. 15/173,604. For the following reasons, we
affirm.
On appeal, Mr. Shafovaloff challenges the Board’s con-
clusion that claims 1 and 3–5 of the ’604 application are in-
definite as well as its finding that claims 1–4 are
anticipated by Anderson.1 Claim 1 is representative and
recites:
A peripheral environment detection device, not a
helmet system, to be mounted on a headgear com-
prising:
a one piece planar mirror surface; further compris-
ing[:]
a bent tab incorporated within the one piece planar
mirror surface for mounting to the headgear hav-
ing a bill or rim or similar mounting surface with
adequate mounting area and rigidity;
providing rearview vision information detection as-
sistance;
capable of adjustment;
positionable for use in front of one eye; and
without a blocking of frontal view.
’604 application ¶ 76 (indentation indicators removed).
We begin with indefiniteness. The Board held that
claims 1 and 3–5 are indefinite because the claims require
a mirror surface that is both planar and bent. Specifically,
the Board “agree[d] with the Examiner that the bent tab
inherently creates a bent portion that is not on the same
plane as the rest of the planar mirror surface (i.e., a non-
planar surface) and thus cannot be ‘within’ the planar
1 U.S. Patent Application Publication
No. 2012/0314317 A1.
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IN RE: SHAFOVALOFF 3
mirror surface, as claimed.” J.A. 8 (internal quotation
marks omitted) (citation omitted). Based on this contradic-
tion, the Board sustained the examiner’s rejection of
claim 1 and dependent claims 3–5 as indefinite under
35 U.S.C. § 112(b).
Where, as here, the Board’s indefiniteness holding is
“determined based solely on intrinsic evidence [in the form
of the claims], our review is de novo.” Cox Commc’ns, Inc.
v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1228 (Fed. Cir.
2016). Patent claims are considered indefinite when their
language is unclear, preventing a person of ordinary skill
in the art from understanding the scope of the claimed in-
vention with “reasonable certainty.” Nautilus, Inc. v. Bi-
osig Instruments, Inc., 572 U.S. 898, 910 (2014).
Contradictory limitations within a single claim or between
different claims can render a claim indefinite. Trs. of Co-
lumbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366–67
(Fed. Cir. 2016) (holding that claims that were internally
contradictory were invalid as indefinite); Multilayer
Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.,
831 F.3d 1350, 1362 (Fed. Cir. 2016) (“A dependent claim
that contradicts, rather than narrows, the claim from
which it depends is invalid.”).
We agree that the claims here are contradictory be-
cause they simultaneously require a (1) “one piece planar
mirror surface” that further includes (2) “a bent tab incor-
porated within the . . . planar mirror surface.” ’604 appli-
cation ¶ 76. These two limitations are contradictory. A
bent tab inherently cannot be incorporated within the pla-
nar mirror because the nature of the tab being bent means
it is not within one plane, and therefore cannot be “within”
the planar mirror surface as the claims require.
Mr. Shafovaloff argues the specification clarifies that
the tab is “bendable so it can be bent and not fracture.” Ap-
pellant’s Br. 19. While Mr. Shafovaloff is correct the spec-
ification describes allowing “bending a tab into a retained
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IN RE: SHAFOVALOFF 4
position from the planar plastic piece folded . . . without
fracturing the material,” this is not what the claim lan-
guage requires. ’604 application ¶ 47. “It is not our func-
tion to rewrite claims to preserve their validity” and
construing “bent” as “bendable” would rewrite the claim
language to include what is foreclosed by the plain mean-
ing. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d
1336, 1349 (Fed. Cir. 2002); IQRIS Techs. LLC v. Point
Blank Enters., Inc., 130 F.4th 998, 1003–04 (Fed. Cir.
2025) (“There is a fine line between reading the claims in
light of the specification and importing limitations from the
specification into the claims, and here, where there is no
evidence suggesting that the ordinary meaning . . . is [so]
limited . . . we are not inclined to import limitations from
the preferred embodiments into the claimed invention.”).
As drafted, the claims of the ’604 application “fail to meet
the [requirement of] ‘particularly pointing out and dis-
tinctly claiming’” “the subject matter which the applicant
regards as his invention” because the contradictory re-
quirements deprive the public of notice of the scope of the
invention and the claims are, therefore, invalid as indefi-
nite. Maxell, Ltd. v. Amperex Tech. Ltd., 94 F.4th 1369,
1372 (Fed. Cir. 2024) (citations omitted).
We now turn to anticipation. A claim is anticipated
only if “each and every element” as set forth in the claim is
found, either “explicitly or inherently” in a single prior art
reference. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009). Anticipation is a question of fact and on appeal we
ask whether substantial evidence supports the Board’s
findings that the prior art teaches every element of the
claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
1341 (Fed. Cir. 2016).
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IN RE: SHAFOVALOFF 5
Mr. Shafovaloff contends Anderson does not anticipate
claims 1–4 because (1) Anderson is not enabled2 and
(2) Anderson does not disclose a one piece planar mirror
surface positioned at eye level as required by claims 1–4.3
While it is true that “a prior art reference cannot antic-
ipate a claimed invention if the allegedly anticipatory dis-
closures cited as prior art are not enabled,” “claimed and
unclaimed materials disclosed in a patent” and “prior art
publications” “are presumptively enabling.” In re Antor
Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012) (internal
quotation marks omitted) (citation omitted). “As long as an
examiner makes a proper prima facie case of anticipation
by giving adequate notice under [35 U.S.C.] § 132, the bur-
den shifts to the applicant to submit rebuttal evidence of
nonenablement.” Id. at 1289 (explaining that an examiner
meets the initial burden by “discussing the theory of the
rejection, the prior art basis for the rejection, and where
each limitation of the rejected claims is shown in the prior
art reference”). Therefore, the burden was on
Mr. Shafovaloff to show that the disclosures in the prior art
are not enabling. See, e.g., In re Sasse, 629 F.2d 675, 681
(CCPA 1980). Although he generally contests whether An-
derson is enabled, Mr. Shafovaloff does not raise particular
arguments explaining why the disclosures in Anderson are
2 Mr. Shafovaloff contests the “functionality or oper-
ability” of Anderson, which the Board took to be an argu-
ment that Anderson is not enabled. Appellant’s Br. 21. We
do the same.
3 Although Mr. Shafovaloff did not raise this argu-
ment to the Board, we exercise our discretion to consider it.
Singleton v. Wulff, 428 U.S. 106, 121 (1976) (“The matter
of what questions may be taken up and resolved for the
first time on appeal is one left primarily to the discretion of
the courts of appeals, to be exercised on the facts of indi-
vidual cases.”).
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IN RE: SHAFOVALOFF 6
insufficient. “An examiner . . . is not required to anticipate
every possible response to a rejection, including showing
that a cited reference is enabling,” and a bare assertion of
nonenablement is insufficient to overcome the presumption
of enablement. Antor, 689 F.3d at 1289. In the absence of
evidence to the contrary, the Board did not err in finding
Anderson enabled.
We now turn to Mr. Shafovaloff’s second argument—
that Anderson does not disclose a one piece planar mirror
surface positioned at eye level as required by claims 1–4.
According to Mr. Shafovaloff, mounting the mirror “in front
of one eye . . . at eye level,” Appellant’s Br. 18, is an im-
provement over the prior art because the left eye is dedi-
cated to rearward viewing and the “right eye fills in the
forward left environment.” Appellant’s Br. 16. He con-
trasts this with Anderson, where a user looks “to the side
and up to see a portion of a mirror, which would divert both
eyes away from frontal viewing.” Id. (emphasis omitted).
Addressing this same argument, the examiner explained
that Anderson teaches a mirror “positionable for use in
front of one eye,” because that position of the mirror in An-
derson means it inherently “is viewable by the user.”
J.A. 404. Substantial evidence supports this finding. The
claim language of the ’604 application requires only that
the mirror is “positionable for use in front of one eye,”
’604 application ¶ 76, and Anderson describes “[a] rearview
mirror component . . . positioned on the halo band and ad-
justably oriented to provide a rearward view to the
wearer.” Anderson ¶ 13. Because the claims of the ’604 ap-
plication do not require the particular mirror positioning
on which Mr. Shafovaloff’s argument is premised, and An-
derson discloses what is claimed in the ’604 application, we
affirm the Board’s decision on anticipation.
We have considered Mr. Shafovaloff’s remaining argu-
ments and do not find them persuasive.
AFFIRMED
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IN RE: SHAFOVALOFF 7
COSTS
No costs.
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