Monday, October 17, 2011

BPAI finds unreasonable Examiner's interpretation of "reflective" to include all materials since all materials reflect to some degree

Takeaway: The Applicant appealed various claims to a window blind, including a dependent claim which specified that the blade was reflective. In explaining the obviousness rejection of this dependent claim, the Examiner indicated that "all materials 'reflect', whether it be heat, light, rain, sound, flying debris, etc." The BPAI reversed the rejection, finding that the Examiner's interpretation rendered the term "reflective" superfluous, and noting that the Federal Circuit disapproved of such an interpretation in Stumbo v. Eastman (Fed. Cir. 2007).

Details:
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.

20 comments:

  1. I has a question little ms. i'd like to read into my claims some limitations from the specification. If the applicant was keen to have reflect mean only radiant energy/thermal radiation reflective then why didn't he use those terms?

    While I sympathize with the applicant's position, the board simply saying that the examiner is interpreting the term too broadly without setting forth what they think the proper construction would be is inexcusable.

    Perhaps the examiner should just go ahead and toss in a Miyazaki to sort the situation out, if the applicant wants radiant energy/thermal radiation reflective then he shouldn't say just "reflective". As is he's leaving it open to two different interpretations, one where it is limited to the embodiments in the spec, and one where it isn't.

    All in all, more shoddy board work on top of shoddy examiner work. You are probably right that the examiner simply should have interpreted it as "a material that reflects light" and then stated all materials reflect light and then sinched the case.

    Or, simply taken official notice of reflective blades for blinds being old and well known in the 80's and 103 that in too.

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  2. "If the applicant was keen to have reflect mean only radiant energy/thermal radiation reflective then why didn't he use those terms?"

    Uhm, because applicant doesn't have to. Applicant is entitled to the BRI of the term that is consistent with the spec.

    "Perhaps the examiner should just go ahead and toss in a Miyazaki to sort the situation out..."

    Thank you for confirming that you don't understand the "holding" of Miyazaki. Hopefully that nonsense is going to be challenged at the Fed. Cir. and rightfully smacked down.

    "Or, simply taken official notice of reflective blades for blinds being old and well known in the 80's and 103 that in too."

    Thank you for confirming that you also have zero understanding of official notice.

    Lulz

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  3. I will take official notice that 6's writings identically disclose a "Lulz generator."

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  4. "... or to the interior to reflect back thermal radiation in the room, thereby reducing further heat losses in cold conditions"

    "reflect back thermal radiation"?

    this pretty much opens the term up to ridiculous broad interpretations like the Examiner used

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  5. Great find and commentary, Karen.

    I think the argument that the Examiner's interpretation exceeds BRI because it renders claim terms superfluous or meaningless is often overlooked.

    That said, as some other commenters noted, I wonder how the BPAI would have come down if the Examiner had taken a slightly more reasonable interpretation (like "reflective" means reflecting a non-negligible amount of EMR) that nonetheless allowed pretty much any material to meet the claim.

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  6. "Uhm, because applicant doesn't have to. Applicant is entitled to the BRI of the term that is consistent with the spec."

    And wut do you propose that is if not what he stated?

    "Thank you for confirming that you don't understand the "holding" of Miyazaki. Hopefully that nonsense is going to be challenged at the Fed. Cir. and rightfully smacked down."

    O I understand it, and I also understand how to stealthily use it to further my own ends. Do you not know whom you're talking to? There's the lawl, the proper use of the lawl, and the alternative use of the lawl. I'm familiar with them all thx.

    "this pretty much opens the term up to ridiculous broad interpretations like the Examiner used "

    Everyone except the tards on the BPAI and some tards around here know that.

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  7. "Do you not know whom you're talking to?"

    I recognized your foul stench as soon as I opened the comments, 6tard.

    You might want to check out 10/956,840. At least one APJ appears to be expressing doubt about Miyazki. Let's hope the applicant takes the hint and moves on up the food chain.

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  8. >check out 10/956,840. At least one APJ
    >appears to be expressing doubt about Miyazki.

    Ryan Alley blogged about that one (Ex parte Stevens) here:

    http://alleylegal.com/2011/10/ex-parte-miyazaki-time-for-federal-circuit-review/

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  9. >"reflect back thermal radiation"? this pretty
    >much opens the term up to ridiculous broad
    >interpretations like the Examiner used

    Agree that this sentence in the spec might mean that reflective covers either light or heat.

    But the egregious part of the Examiner's construction is extending the term to cover rain, sound, and flying debris. How does a mention of reflecting thermal radiation lead to a construction which covers "reflecting" physical objects?

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  10. Reflecting is reflecting isn't it Karen? If they want to claim EM rad reflecting then fine, let them put it in the claim. If they want to make argument that such is the only reasonable intrepretation given their use then fine. But spare us the qq about interpreting reflecting as mere reflecting. The BPAI fed up, big whoop. They do it all the time.

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  11. "If they want to make argument that such is the only reasonable intrepretation given their use then fine."

    Why should they have to argue for something that they should be getting without having to argue for it?

    You must be one of those "build a record" examinertards. Your job is not to "build a record," it's to do your job. Give the claims the BRI without applicant having to ask, or argue, for it. It's the least you can do. Literally.

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  12. "Why should they have to argue for something that they should be getting without having to argue for it?"

    Because that is how all evils at the PTO are righted?

    Are you familiar with basic patent prosecution? If not, there are books on the basics.

    "You must be one of those "build a record" examinertards."

    No actually I'm not. But building a record in some cases isn't the worst thing to do.

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  13. "Are you familiar with basic patent prosecution?"

    Lulz. This from the examinertard who thinks that an examiner taking official notice is substantial evidence because "it's a statement of a government official on the record."

    Yeah, I'm familiar with patent prosecution. I'm very familiar with examinertards like you that were "trained" during the Dufas administration. I can't take somebody like you who still doesn't understand the difference between evidence and facts very seriously.

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  14. "Lulz. This from the examinertard who thinks that an examiner taking official notice is substantial evidence because "it's a statement of a government official on the record."
    "

    Did I say it was substantial evidence? Oh wait, nope, I didn't. For someone who is supposed to know his arse from his elbow on these matters you sure don't JD.

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  15. "Did I say it was substantial evidence?"

    Yeah, you did.

    Here's a thread where you demonstrated your glaring ignorance for days on end.

    http://www.patentlyo.com/patent/2008/06/patent-prosecut.html

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  16. So a thread from 3 years ago, 2 years after I set foot in patent lawl indicates that I now believe official notice to be substantial evidence?

    I'm not sure if I should call you a tard or even bother to respond to you since your retar dation is so complete that you probably wouldn't even understand what I called you.

    Your inability to understand that "provide substantial evidence" is not "all that is required" after I know more about the patent system is almost as lolable as your belief in the "substantial evidence" standard relating to instances of a government agency taking official notice.

    Your admin lawl is so weak it's lolable JD. Did you sleep through that course?

    I will never stop loling at you for citing a case where official notice was used, and upheld as being properly used in the courts as a case stating that such is not proper.

    I mean seriously, I'm not a lawlyer, and you are. You should be able to tell the difference in such things with much greater ease than myelf. How is it that a high paid lawltard like yourself makes such a basic mistake?

    And it's still a shame that I spurred NAL to terrorize boards because of that issue.

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  17. "So a thread from 3 years ago, 2 years after I set foot in patent lawl indicates that I now believe official notice to be substantial evidence?"

    So you've been at this 5 years? And you still don't understand the difference between evidence and facts?

    Sad.

    "Your inability to understand that 'provide substantial evidence' is not 'all that is required' after I know more about the patent system is almost as lolable as your belief in the 'substantial evidence' standard relating to instances of a government agency taking official notice."

    Your writing is still so horrible.

    "I will never stop loling at you for citing a case where official notice was used, and upheld as being properly used in the courts as a case stating that such is not proper."

    Citing a case for the exact opposite proposition than what the court held? No thanks, I'll leave that the editors of the MPEP. In the meantime, I'll continue to cite Zurko for the precise holding it contains.

    "I mean seriously, I'm not a lawlyer..."

    Seriously, you're not.

    "And it's still a shame that I spurred NAL to terrorize boards because of that issue."

    It's still a shame how badly you outshined that stooge over there.

    You still a GS-9?

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  18. "So you've been at this 5 years? And you still don't understand the difference between evidence and facts?"

    Did I say that?

    "You still a GS-9? "

    Fo sho, too lazy to do 106 for a promo lol. And my little startup is taking my time of late.

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  19. "Did I say that?"

    With. Every. Post.

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  20. This reminds me of an application I prosecuted a few years ago that was eventually allowed. The claims involved a radioactive pharmaceutical but none of the references cited by the examiner disclosed radioactive pharmaceuticals, only medications. During an interview with the examiner and his supervisor, the examiner was unable to explain where, why or how the medications of the references disclosed a radioactive pharmaceutical. The examiner's SPE jumped in with the statement that "everything is radioactive" and abruptly ended any further discussion of the subject. Based on the foregoing, I am sure you can imagine just how productive the rest of that interview was.

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