Claimed "storage space" evaluated relative to the preamble (Ex parte Jenkins)

Ex parte Jenkins
(Appeal 2009005028, Appl. No. 11/204,671, Tech. Center 3600)
Decided September 30, 2009

I don't deal with a lot of mechanical cases, though I do read a fair number of BPAI decisions for Technology Center 3600. The claim in this mechanical case was for "a carrying case for transporting a user's fishing equipment". The Board actually limited the broadest reasonable interpretation to the broadest reasonable in view of the specification.

Fraser does not teach a storage space as claimed. Although Appellant’s claim 1 does not include express limitations on the size or dimensions of the storage space claimed, Appellant’s specification explains that the storage space is provided for holding fishing tackle and knives (FF 4). The claims are directed to “[a] carrying case for transporting a user's fishing equipment.” In the context of Appellant’s specification and claims (which are part of the specification, see Merck & Co., Inc. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003)), it is not reasonable to construe “storage space” as including a space defined by the thickness of a rivet head. Thus, though Fraser teaches an external container and an insert for holding fishing rods, it does not anticipate the claimed carrying case because it does not teach a storage space.

I know there's a fine line between importing limitations from the spec into the claims, and perhaps this one crossed that line. Perhaps the Applicant should have put "the storage space sized to fit fishing equipment" as an explicit limitation. (Would this have had the intended limiting effect?)

That said, it was refreshing to see the Board pay attention to the second half of the BRI standard: broadest reasonable interpretation in view of the spec. Of the BPAI decisions I read, I feel that a significant number use a claim construction that does not meet this standard.

This was a case in which the Applicant won the battle but lost the war. The Board reversed the Examiner's §102 rejection based on this claim construction, but went on to find an appropriate-sized space in another reference, and so entered a §103 rejection.