Details: I'll discuss five different cases.
Ex parte Pham involved a claim directed to a lens for implanting into an eye. The limitation at issue was "at least first and second edges formed in a region" of "a posterior optic periphery." In response to an anticipation rejection, the Applicant argued that the reference taught edges located on an anterior, not posterior, optic periphery. The Examiner argued that his reading of the reference was nonetheless acceptable because "labeling surfaces as anterior and posterior has no effect on the sturucture and the terms are merely dependent on the perspective of an individual."
The Board found that anterior and posterior were not interchangeable in this particular case, referring to the Applicant's specification:
While [the Examiner's] argument is sometimes appropriate, in the instant case the anterior and posterior faces serve different purposes which would not have been considered by the ordinary skilled worker to be interchangeable, since the anterior face is directed towards the cornea and the posterior face towards the retina ([reference to Applicant's specification]). In order for the optical lens to function correctly, the optical axis and orientation must be maintained or light entering the lens will not be properly focused on the retina ([reference to Applicant's specification]). Therefore, in this particular situation, the labeling of anterior and posterior has structural effects on the optic lens, differentiating these sides structurally, rather than simply functionally.The Board then reversed the rejection.
In Ex parte Richardson, the claims at issue were directed to a valve for use in a blood vessel. The limitation at issue was "a support frame that meets the valve frame at a first and second region that extends parallel with the reversiably sealed opening." In response to an anticipation rejection, the Applicant argued that the reference taught a support frame that met on an axis perpendicular to the valve frame. The Examiner argued that:
[A]xes are arbitrary points or lines established through structural elements. A plane can be established in an infinite number of directions through the opening and the frames, thus since the claims do not clearly set forth how the axes run through the structures to differentiate from the prior art the Examiner has established arbitrary axes through the opening and junction also.The Board agreed with the Applicant, noting that "[t]he Examiner appears to have arbitrarily set the axis of the cited references with no consideration as to the relationship with other claimed features." The Board then reversed the rejection.
Ex parte Williams involved a vehicle seat system. Claim 1 read as follows:
1. A seat system for a vehicle comprising:In response to an anticipation rejection, the Applicant argued that the reference taught a structural support member that was partially enclosed by the headrest portion, but not by the backrest portion. In the Answer, the Examiner explained that "an imaginary line" drawn through the center of foam block 33 divided the foam block into a headrest portion (above the line) and a backrest portion (below the line), and that under this reading, foam block 33 is enclosed by both.
a seat foam pad having a headrest portion and a backrest portion;
a structural support member formed of a foam material that is at least partially enclosed by the headrest portion and the backrest portion; ...
The Board reversed the rejection, finding that the Examiner's imaginary line was an unreasonable interpretation. The reference also included a second foam block 34 which was adjacent to the backrest section 13; the first foam block 33 was adjacent to the headrest section 12. Therefore "[a]ny line of demarcation between the headrest and backrest sections, in a fair and reasonable reading of the Taylor patent, would be located at a position somewhere between foam blocks 33 and 34, and not at a position bisecting or otherwise intersecting foam block 33." (Emphasis in original.)
Ex parte 6,378,809 was a reissue application dealing with spacecraft. Claim 4 read as follows:
4. A spacecraft comprising
at least one thermal radiator panel that is movable, from a stowed position to a deployed position,
wherein in said deployed position said thermal radiator panel extends in an anti-Earth direction from an anti-Earth pointing end of the spacecraft,
wherein when in the deployed position a transverse edge of said panel is non-parallel to a transverse aft edge of said spacecraft.
In an anticipation rejection, the Examiner commented that the positional terms in the claim were "somewhat arbitrary" and argued that "by defining a transverse edge as extending across the [radiator] panel from the hinge," the reference then disclosed that edge as being non-parallel to a transverse edge of the spacecraft as claimed.
The Board reversed the rejection. After first disagreeing that the claim terms were "somewhat arbitrary," the Board went on to find that the Examiner's interpretation of the transverse edge of the radiator panel to be unreasonable and inconsistent with the spec.
We find that the Specification makes clear that the transverse edge of the satellite is located at the aft end of the satellite (FF 2), and that the longitudinal axis of the panel extends along the panel from the satellite (FF 3). Thus, the transverse edge of the panel would be orthogonal to the longitudinal axis of the panel within the plane of the panel [rather than extending across the panel from the hinge as alleged by the Examiner.]
The claims at issue in Ex parte Li were directed to the structural features of a cryogenic cooling apparatus. The Board commented that
It appears that the Examiner has, in effect, found that Averill discloses Appellants’ cooling apparatus lying on its side with a “top flange” on the right and two base members extending vertically on the left.Looking to the claims and the specification, the Board found that:
[O]ne of ordinary skill in the art reading the claims in light of the Specification would understand claim 1 to define an apparatus in which the cryostat and the support stage are aligned vertically relative to the support surface (e.g., the ground, see Spec. 8, l. 6-8, 12-13; Fig. 1).Using this claim interpretation of vertical alignment relative to the ground, the Board reversed because the reference did not disclose a cryogenic cooling apparatus in that configuration.
Related Posts: I first came across the concept of arbitrary delineation of structures in Ex parte Dennison, and discussed that case here.