Ex parte McQueer
Appeal 2009013145, App. No. 10/987,889, Tech. Center 3700
Decided: June 22, 2010
Claim 11 was directed to a protective athletic garment that includes “a substantially rigid shoulder portion adapted to protect a shoulder area of a user from impact.”
The Examiner issued an anticipation rejection using a reference which disclosed a breast plate. The Examiner read the “shoulder portion” of the claim on a pair of shoulder straps for attaching the breast plate to a user’s body.
The Applicant argued that the reference explicitly taught shoulder straps made of “elastic nylon material,” which is not “substantially rigid.” In the Answer, the Examiner replied that the term “substantially rigid” is so broad that “[a]nything can be considered substantially rigid.”
The Examiner provided this further explanation:
All fabric materials are rigid to a degree, including elastic/nylon material. Elastic/nylon material would have a substantially greater rigidity in comparison to other materials. Furthermore, the degree of rigidity of an elastic nylon material would also be affected by the temperature of the material, very cold temperatures would create a substantially more rigid material then when the same material is at room temperature.
The Board was not persuaded by the Examiner's reasoning:
Thus, the Examiner contends that because there theoretically exists some material that is less rigid than an elastic nylon material, then the elastic nylon material may be considered substantially rigid. That position is unreasonable. By that standard, all materials are at once substantially rigid and yet also substantially non-rigid.
The Board cited to dictionary definitions of rigid and flexible, and finally concluded that “[i]t is unreasonable to view the requirement that a material be substantially devoid of flexibility as also encompassing a material that is flexible, such as Jankowski’s elastic nylon material.” Such an interpretation “effectively reads the term 'substantially rigid' out of the claims.”
The Board also noted that the Examiner's statement about rigidity at cold temperatures was a mere assertion. Furthermore, the Examiner did not “adequately explain, why, even if the assertion is true, a material that increases its rigidity only for a limited time under an extreme circumstance, i.e., very cold temperatures, meets the general and unrestricted claim requirement of a shoulder portion that is “substantially rigid.”
My two cents: Obviously the Board reached the right result here. Next time you challenge an Examiner's unreasonably broad interpretation of "substantially," consider including the Board's reasoning in your arguments.