Arbitrarily claimed structures are vulnerable to Examiner's arbitrary interpretation of reference

Takeaway: Last week, I posted here about cases in which the BPAI reversed because the Examiner had interpreted a reference's structure in an arbitrary manner. Today I discuss the opposite: cases in which the Board found that an element was arbitrarily described in the claim, so that the reference did teach the element.

Details: Ex parte Janda claimed "a system for managing rental equipment" which included first and second secure areas, the second secure area being accessible from the first secure area. The reference disclosed a storage room with a locking mechanism. The Board found that:

One of ordinary skill in the art, seeing the layouts of the storage room 110 shown in Figs. 1A, 1B and 2 of Brown, would understand that the room could be divided into separate areas of arbitrary size and shape. That is, one of ordinary skill in the art would understand that different portions of the floor space of the storage room 110 might be assigned arbitrarily to a “first area” or to “second areas” of the room. The layouts shown in Figs. 1A, 1B and 2 of Brown indicate that any such area within Brown’s storage room 110 would be accessible from any separate area within the room.

It appears that the Board found this arbitrary assignment of areas in the reference to be acceptable because of the manner in which the areas were described in the claims:

The Appellant uses the terms “first secure area” and “plurality of second secure areas accessible from the first secure area” broadly enough to reasonably include areas within the same secure storage room so long as each second secure area is accessible from the first secure area.

Though the Board referred to the claim terms as "broad," it seems that "arbitrary" would also fit.

In Ex parte Stiles, the Board found that the Examiner's interpretation of the reference structure was "no more arbitrary than the [Applicant's]," at least when looking at the Applicant's figures. The claims were directed to a razor including a "handle portion having lower, middle, and longitudinal portions." The claim defined each portion as extending along a corresponding axis, and further defined angles of intersection for pairs of axes. The Appeal Brief referred to the following figure in summarizing the claim:

The rejection included this figure from the reference, with annotations added by the Examiner:

The Applicant distinguished the reference by arguing that the handle in the reference was a continuous curve without identifiable axes:

The continuous nature of the curve means that any arbitrary designation of a particular point on the curve as the lower, middle, or upper portions of the curve does not result in that portion of the curve extending along an identifiable first, second, or third axis as required by [the claims].

The Board didn't see the distinction:

[T]he similarity between Hollinger’s handle and that of Appellant is striking, and the demarcated lower, middle, and upper portions of Hollinger’s handle extend along the three demarcated axes in both Appendices A and B in much the same manner as Appellant’s lower, middle, and upper portions. As such, the Examiner’s parsing of Hollinger’s handle into three portions and definition of three longitudinal axes along which those portions extend are no more arbitrary than those described by Appellant in Figure 6A.

In another case, Ex parte Gogarnoiu, the Board did characterize various positional relationships in a claim as "arbitrary," but the real problem was intended use. The claims were directed to a dental implant, with various limitations defining the orientation of implant portions, e.g., "a first portion forming a mesiodistal face having a first angle extending obliquely with respect to the longitudinal axis ... " and "a second portion forming a facial face having a second angle extending obliquely ... "

The Applicant argued that the reference did not disclose the implant being oriented in the mouth as claimed, but the Board found that "when the device is outside a patient, the designation of faces is arbitrary." The Board further explained:

We appreciate Appellant’s argument that “the use of terms such as ‘mesiodistal’ or ‘facial’ is not merely terminology . . . but instructs one having skills in the field of dentistry which portion or face of a tooth or implant is being described with respect to the patient’s mouth” (App. Br. 5-6). However, in the context of a device claim, where the device may be implanted in multiple different orientations in multiple different locations in the mouth, the orientation terms do not impose any structural requirements on the device itself. Instead, at best, these orientation terms indicate how the device will be implanted into the patient’s mouth. This intended use of the implant of claim 1 does not structurally distinguish the implant from the dental implant disclosed by Elian.

My two cents: At some level, you could say that almost any structure is arbitrary when you use words to define it. The trick seems to be deciding whether the Examiner's interpretation of a structure in the reference is more arbitrary than how you define the structure in your claim.