Ex parte Hageman
Appeal 2009013454; App. No. 10/864,225; Tech. Center 3600
Decided August 11, 2011
This application was directed to roofing material. A representative claim on appeal read:
12. A roof comprising:
a deck; and
a laminate of a metal layer, a core layer and a plastic layer overlying said deck with the metal layer being on one side of the core layer and the plastic layer being on an opposite side; and
a roof covering over the laminate.
The underlying issue was the interpretation of the claim term "laminate."
During prosecution, the Examiner rejected the claim as being anticipated. When the Applicant argued that the three layers in the reference were not a "laminate," the Examiner maintained the rejection, went final, and responded as follows:
A laminate is a layered structure in which the layers are fastened together by a fastening means. The Hageman prior art has a metal, core and plastic layer fastened (via 39) together in the exact arrangement that is claimed within the application.
In an After Final response, the Applicant argued that the Examiner's definition was wrong, and presented a dictionary definition:
The Examiner['s definition] is wrong. A laminate is "a sheet of material made by bonding two or more sheets or layers." (WordNetB 3.0, C 2006 by Princeton University). Thus, it is not merely sufficient that the layers be fastened to together they must be bonded together. The insulation layer 26 is clearly not bonded to the laminate of the metal 24 and the fabric 26 and thus the metal 24, the fabric 26 and the insulation layer 22 together do constitute a laminate; instead, as clearly disclosed in Hageman, only the metal and fabric layers constitute the laminate.In an Advisory Action, the Examiner presented his own dictionary definition, from Webster's II New College Dictionary, Third Edition: "1) to make by joining several layers; 2) to split into thin layers; and 3) to
press or form into a thin sheet."
The Applicant appealed, and presented the same argument about the meaning of "laminate." In the Answer, the Examiner criticized the Applicant's definition because it wasn't in the specification:
The examiner also contends that if a specific definition of laminate was sought after by the applicant, it should be found within the claim language or the original specification, which it was not. Consequently, if the applicant's specific, sought after definition of laminate were to be instantly added into the claim or specification, it would constitute new matter.
The Board then found the Examiner's definition of "laminate" was reasonable:
... in light of the acceptable, broader general dictionary definitions [presented by the Examiner] and the lack of any further specific definition of the term in Appellant’s claim language or Specification. The Examiner’s claim interpretation is not inconsistent with Appellant’s Specification, and Appellant provides us with no argument as to why the Examiner is unreasonable in adopting a general dictionary definition of the term. Rather, Appellant merely provides us with a dueling definition without any convincing explanation or reason as to why we should choose this narrower definition in light of the Office’s claim construction practice of adopting the broadest reasonable construction when viewed in light of Appellant’s Specification.
The Board then noted there was no dispute that the reference disclosed that the three layers were attached by mechanical fasteners such as screws or nails. Thus, the reference anticipated under the broadest reasonable interpretation.
My two cents: The Board seems to be saying that presenting your own definition of a claim term isn't enough when the Examiner also presents one – that you you need to explain why your narrower definition is nonetheless the broadest reasonable one. That is, the Board seems to give the Examiner's definition the presumption of Broadest Reasonable Interpretation, leaving it to the Applicant to overcome that presumption. I've not seen this before. Why didn't the Board act as fact finder and determine which definition was correct?
I note both parties used layman's dictionaries. Maybe a technical dictionary would have helped. I did a quick web search, and found several technical definitions that were similar to the general dictionary definition provided by the Applicant. Is a definition from a technical dictionary more relevant than one from a general dictionary?
Even without a definition from a technical dictionary, maybe you could tie the definition to the field of the invention, or to "the art". But what is the relevant field/art here? Roofing? Materials science? This particular application didn't have a lot of jargon, and seemed like it could be understood by a layman. Does that say that a specialized dictionary definition is inappropriate?
Moving away from the issue of what definition to use, and to the related topic of when to introduce them ... The Examiner's Answer suggested that if "a specific definition of laminate was sought after by the applicant, it should be found within the claim language or the original specification." I agree that this is a good idea if the Applicant's overriding concern is getting allowed claims as soon as possible. Because doing so should force the Examiner to interpret the claim as the Applicant intended.
But this approach is extremely impractical, since then every single term in the claim would the require a definition ... deck; laminate; layer; core; metal; plastic; side; opposite; roof. Each of those terms can and probably will be interpreted by the PTO in a way that Applicant didn't intend. Rather than narrowing my claims at filing by providing all these definitions, I'd rather wait until prosecution and argue about the meaning of those particular terms that are at issue. You can always introduce evidence during prosecution about the meaning of a particular claim term.