Tuesday, June 28, 2011

BPAI finds "planar" means "flat" not "thin"

Takeaway: In considering the meaning of "planar", the BPAI adopted the Examiner's interpretation ("flat") rather than the Applicant's interpretation ("thin"). The Board found that the specification did not support the interpretation "thin." The Applicant did not address the dictionary definition used by the Examiner, nor did the Applicant provide his own definition.


Ex parte Hixon
Appeal 2009003090; Appl. 10/1718,852; Tech. Center 3700
Decided  July 30, 2010

The claims in the application on appeal were directed to a die used with a die cutting system. A representative claim on appeal read:

48. A die for forming patterns from a sheet of material, comprising:
a portable, substantially rigid, substantially planar plate;
at least one cutting edge protruding from a surface of said substantially planar plate.
(Emphasis added.)

Independent claims 48 and 62 both included the "substantially planar plate" limitation. The Examiner rejected claims 48 and 62 as anticipated by Gaspari (plate 11 and cutting edge 14, 14a):

The Applicant appealed and included two arguments about Gaspari. First, the Applicant argued that Gaspari's plate was not "substantially rigid." Second, the Applicant argued that Gaspari's plate was not "substantially planar":
Further, the only die thickness disclosed in Gaspari is a quarter of an inch, which, in view of the relatively small lateral dimensions and rigidity of the disclosed die, could hardly be considered to be "substantially planar."

The Examiner's Answer responded to the Applicant's "substantially planar" argument by offering a definition of "planar" and an explanation of how Gaspari's plate met that definition:
The term "planar" is defined as "Of or relating to a plane; (having parts) situated in or forming a plane or (esp. parallel) planes; flat, two-dimensional" Oxford English Dictionary (definition adj. 1.). However, appellant's die includes a plate with a thickness and a planar surface. Hence, appellant's die is not two-dimensional. The die of Gaspari is relatively flat and contains a planar surface as is in appellant's die. It is noted that the term "planar" is not specifically define to preclude a plate having different thickness than the preferred embodiment set forth in the appellant's written description.

The Applicant responded in the Reply Brief:
[T]he phrase "substantially planar" is intended to signify that the plate portion of each claimed die is very thin, as opposed to the relatively large, 0.17 inch thickness of the die plate that has been disclosed in Gaspari. The as-filed specification, at paragraph [0037], even provides a non-limiting example of a 0.010 inch plate thickness that could be considered to be "substantially planar." Notably, the thickness of the plate described in paragraph 100371 one-seventeenth of the thickness of the plate described in Gaspari.

The Board then found that the Applicant lacked support for a reading of "planar" as "thin":
Appellants' Specification does not provide support for Appellants' proffered definition. For example, the initial line of paragraph [0004] defines a die as a "thin planar plate." In paragraphs [0015] and [0030] the die is defined as a thin, substantially planar plate 62. The use of the word "thin" and the term "substantially planar" in the same description conveys the meaning that these terms are not synonymous but are different descriptors of the claimed die. Furthermore, the description of the die surface 22 as "substantially planar" conveys that the surface, which by definition has no depth, is flat. See Spec. para. [0041].
(Emphasis added.)

The Board therefore adopted the ordinary and customary meaning offered by the Examiner. Under this meaning, "substantially planar plate" read on Gaspari's plate, so the Board affirmed the anticipation rejection.

My two cents: The Applicant was definitely stuck on "planar." All the originally filed claims used the term, the term wasn't amended during prosecution, and the specification consistently used "planar" in referring to the surface.

The Applicant offered no definition to support his interpretation of "planar" as "thin," but instead referred to a "non-limiting example" from the spec. That simply won't do. Non-limiting is, well, non-limiting. If you want the limitation to be interpreted as "thin" then either make sure the word you use connotes "thin" or amend to include "thin."

Maybe the Applicant should have taken advantage of the definition introduced by the Examiner in the Answer, and argued that the proper meaning was "two-dimensional," which sort of connotes "thin." The Examiner didn't think that definition was appropriate ("Applicant's die has a thickness"). And the Board might have chosen the Examiner's "flat" over "two-dimensional."  But I think this would have been a stronger argument.

Finally, why didn't the Applicant argue over the claim term "plate" ?? I don't know what the definition of "plate" is – I'm sure there are many – but that word sure connotes "thin" to me more than "planar" does.


  1. Move along ... bad attorney argument ... nothing to see.

    Actually, the problem is something I see in too many specifications -- failure to define important terms.

    Too many attorneys get caught up in the "I don't want to define the term because I don't want the claim to be interpreted too narrowly." If you don't define the term, the Examiner (or BPAI will) and they'll define it much broader than you want.

    You have a choice -- either define it yourself or have the Examiner/BPAI define it for you. Odds are that you'll be much happier with the result when you define it yourself.

  2. I doubt if they needed to define this "imporant" word as of the time of drafting because it didn't seem imporant then. Whoever drafted the application is probably 100% well aware that this definition this attorney wanted to use here would be re tarded.

  3. I don't know if the examiner's combination of the prior art was correct but I think they had a reasonable interpretation of 'planar'.

  4. I'm not sure "plate" connotes "thin" as well as you think at the thicknesses at issue (0.17 in vs 0.010 in). dinner plates are about 0.17 in thick, also plate armor, etc

  5. "I'm not sure 'plate' connotes 'thin' as well as you think at the thicknesses at issue."

    The claims must be interpreted by those skilled in the art. As such, when considering whether a layer in a semiconductor is considered thin or not you cannot look the art of chroming automobile parts.

    "I doubt if they needed to define this 'imporant' word as of the time of drafting because it didn't seem imporant then."
    They at least needed to look the term up in the dictionary because it doesn't mean what they thought it meant.

    FYI -- the reason why attorneys get paid the big bucks is because they should be dotting every i and crossing every t. If a term is in your claim, you better well know what it means -- thinking you know what it means doesn't cut it.