Ex parte Wilkins
Appeal 20090012698; Application 11/167,701; Tech. Center 3600
The application related to window blinds. An independent claim included a shutter frame, blades across the shutter frame and a control mechanism, with various other structural limitation for these elements. Dependent claim 21 further specified "at least one of said blades having a reflective surface."
The Examiner rejected all claims as obvious over a combination of various references. During prosecution, the Applicant argued the reflective surface feature of dependent claim 21. The Examiner did not address the Applicant's argument during prosecution.
On appeal, the Applicant argued all independent claims and a number of dependent claim, including claim 21. The Applicant argued in the Appeal Brief that the combination did not teach the reflective surface feature, and further noted that "the Examiner fails to provide any citation to disclosure in the references which teaches or discloses this claim element."
In the Answer, the Examiner provided additional explanation of the rejection of dependent claim 26. Specifically, the Examiner explained that "all materials 'reflect', whether it be heat, light, rain, sound, flying debris, etc."
On appeal, the Board found that the Examiner's interpretation of "reflective" was unreasonable because it rendered the term superfluous.
By concluding that all materials reflect, and as a consequence are “reflective,” the Examiner interprets the term “reflective” as used in claim 26 to be superfluous. Our reviewing court disfavors any claim interpretation which would render a claim term superfluous. Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007). The Examiner has cited nothing in Music, Hordis or Edwards which would disclose a window blind and security shutter in which at least one side of the blades has a reflective surface under a reasonable interpretation of the term “reflective.”
The Board then reversed the rejection of dependent claim 26.
My two cents: A righteous smack down of the Examiner. It wasn't enough for the Examiner to say that all materials reflect light to some degree. No, the Examiner had to read it even broader than this, and say that reflection wasn't limited to light, but also included reflecting flying debris! Unbelievable.
This is one of the most egregious examples of not just failing to read the claims in view of the spec, but actually completely ignoring the spec. The only mention of "reflective" in the spec was this single sentence:
The blades may also be formed with at least one reflective surface, which can be presented to the exterior to reduce absorption of radiant energy from the sun in hot weather conditions, or to the interior to reflect back thermal radiation in the room, thereby reducing further heat losses in cold conditions.So when read in light of the spec, "reflective" simply does not mean reflecting rain, sound, or flying debris.
Unfortunately for the Applicant, at least one prior art rejection of each independent claim was affirmed.