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.
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 , 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  defines a die as a "thin planar plate." In paragraphs  and  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. .
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.