Takeaway: In Ex parte Walpole, the BPAI applied the superfluity doctrine, i.e., a claim construction should not render a phrase superfluous. The independent claim recited “a magnet” and “an opposing magnet.” The Applicant argued that “opposing” meant the two magnets repelled each other. The Board noted that a dependent claim recited “wherein poles of the opposing magnet are generally aligned with poles of the magnet such that the magnet and the opposing magnet repel one another.” The Board said that this dependent claim would be superfluous under the Applicant's interpretation, and therefore adopted the Examiner's interpretation: “spatially opposed.”
Ex parte Walpole
Appeal 2009001235, Appl. No. 11/057,770, Tech. Center 3700
Decided Feb. 19, 2010
The claims were directed to a compressor valve which included two magnets: “a magnet coupled to the valve member” and an “opposing magnet.” The Examiner found this feature to be taught by one magnet placed above another, i.e., in opposite locations.
The Applicant argued that “opposing magnet” meant “having a magnetic pole which repels the other magnet.” In support of this argument, the Applicant pointed to the spec:
[T]he specification favors construing this term as referring to repelling magnets. The specification explains that a “magnet 40 is mounted to the button 38 in such a manner that the orientation of magnets 34 and 40 is such that like poles face each other creating a repelling force.” Application, paragraph 10. That is, the specification teaches repelling magnets. Although Appellant does not suggest that the Board read the specification into claim 18, Appellant stresses that one of ordinary skill in the art would construe the phrase “opposing magnets” to refer to repelling magnets if this phrase is read in light of the specification.The Applicant also tried arguing what term meant to a person of ordinary skill in the art:
One of ordinary skill in the art of magnetism would readily appreciate that magnets either repel or attract one another depending on the orientation of their poles. Thus, in context of magnetism, the term “opposing” as recited in the claims would be understood to mean “repelling” by those of ordinary skill in the art.The Applicant acknowledged that the dependent claim explicitly recited that the opposing magnet repelled the first magnet, but argued that claim differentiation did not apply:
The Examiner's claim-differentiation argument is inapt because claim 27 does not have to further limit the term “opposing” for this claim to be different in scope from claim 1: claim 27 adds other limitations, such as “a guard,” and “a shoe.”The Board said claim differentiation did apply, and that the doctrine dictated that “opposing” could not refer to the magnetic property, since this would render superfluous the dependent claim language “wherein poles ... are generally aligned ... such that the magnet and the opposing magnet repel one another.” The Board then held that the Examiner's interpretation of “opposing” as “spatially opposing” was reasonable.
My two cents: The Board got this one right. In particular, I agree that the specification did not support the Applicant's interpretation. While the spec clearly described two magnets that repel each other, it didn't use the adjective “opposing” to describe this feature.
Also, the Applicant should have argued the dependent claim which explicitly spelled out “the magnet and the opposing magnet repel one another.” The Applicant clearly thought the “repelling” feature distinguished over the references. Therefore, the Applicant should argued the claim that specifically included the feature: the dependent claim. That way, if the Examiner/Board agreed that this feature distinguished over the art, the dependent claim would be allowable. As it was, the Board didn't decide (or need to decide) whether or not the reference taught the “repelling” feature.