Wednesday, October 20, 2010

BPAI requires claim terms to be interpreted using same perspective (Ex parte Saint-Gobain)

Takeaway: The BPAI held that a proper claim construction of "curved" and "straight" must use the same perspective for both terms. The Examiner's erroneous construction interpreted "curved" using a cross-section view while using a top view to interpret "straight." Under the proper claim construction, the Board found that the combination did not teach all the elements, and so reversed the obviousness rejection. (Ex parte Saint-Gobain.)

Ex parte Saint-Gobain Performance Plastics Corp.
Appeal 2009004255, Reexam Control 90/008,001, Tech. Center 3900
Decided June 4, 2010

The claim for which claim construction was at issue was directed to a conveyor belt. The belt included raised ribs on both faces, where the ribs on the first face "have a curved shape" and ribs on the second face "are straight."

The Examiner relied on Fig. 3 of the Gilbert reference for teaching both sets of ribs:
The Examiner took the position that the ribs in Gilbert were curved as seen in profile view, and also "extend straight and parallel across the belt.”

The Applicant argued that the Examiner's construction was improper:

... In making this rejection, the Patent Office appears to be applying a meaning to the claim term "wherein the ribs raised above the first face have a curved shape ... and the ribs raised above the second face are straight, [and] are parallel to each other" different than that dictated by the specification. Such an interpretation is incorrect. 

According to the Applicant, the proper construction was understood according to Fig.2 of the application, which shows the sinusoidal ribs in whole lines and the straight ribs in dotted lines:

The Board agreed with the Applicant. The Board explained that the Applicant construed both “curved shape” and “straight” in the same (top view) perspective, while the Examiner construed “curved shape” in one perspective (cross-section) and “straight” a different perspective (cross-section). "Given the context of the whole claim, this [the Applicant's] construction is the proper one."

My two cents: Nothing revolutionary here, but a good angle to think about when claiming spatial relationships between claim elements.


  1. Just another example of an examiner who is more intent on rejecting the claim than he or she is on logic and reason. The Gilbert reference shows straight ribs on a curved belt. It is clear that each of Gilbert's ribs could be replaced with a straight, unbendable rod.

    That the applicant had to invest in an appeal is appalling. We will know there has been "reform" and "quality control" at the PTO when we no longer see examiners and their supervisors signing off on office actions like this.

  2. "We will know there has been 'reform' and 'quality control' at the PTO when we no longer see examiners and their supervisors signing off on office actions like this."


    Don't hold your breath. The knuckle head "quality assurance" types that signed off on the garbage claim construction reversed by the Board in this case are in the Central Reexam Unit, supposedly the PTO's best and brightest.

    Let that sink in for a little bit: the PTO's best and brightest.


  3. "Let that sink in for a little bit: the PTO's best and brightest."

    It has sunk in with me. I was involved with a reexamination of an apparatus claim that recited "wherein the X is selected from the group consisting of Y and Z." The reference taught that the apparatus could be constructed using Y or W. The Office Action confirmed the claim, explaining that the reference taught a group consiting of Y or W, not Y and Z.