Ex parte Longo
Appeal 2009014183; Appl. No. 11/328,537; Tech. Center 3700
Decided: May 23, 2012
The subject matter on appeal was a cartridge for caulking compound. The main issue on appeal was the meaning of the term "punch" in claim limitations such as “punching an opening in the tubular container.”
For the "punching" limitations, the Examiner relied on a reference teaching of a "rapidly actuatable tool for making cuts" which "deforms the cylinder wall to form catches 17 as it cuts." The Applicant argued that the cutting described in the reference was not the same as punching.
The Board presented a dictionary definition ("to cut, stamp, pierce, perforate, form, or drive with a tool or machine that punches") to show that the Examiner's interpretation (punching" includes "cutting") was reasonable. The Board found that the Examiner's interpretation was "essentially unrebutted" by the Applicant.
Appellant, however, points to no specific wording in the specification that shows a precise meaning given to the term “punching” or to any related terms such as “punch” that would amount to interpretive guidance. Appellant also fails to provide support for this argument by pointing to any type of general purpose or technical dictionary as interpretive guidance that punching would not encompass the cutting performed in van Manen, nor does Appellant state that this is a term of art known to those of ordinary skill to exclude van Manen’s cutting. Appellant merely provides attorney argument against the Examiner’s interpretation with nothing further.Based on this claim interpretation, the Board affirmed the prior art rejections of the independent claims.
My two cents: I picked this decision not because it was controversial in any way, but because it included a clear and concise statement of what the Board is looking for in an argument about claim construction. A mere assertion in the Appeal Brief that a widget is not a blodget probably won't be convincing. Instead, you should refer to a "precise meaning" in the spec, to a dictionary definition, or to a statement by a expert about what the term means to a hypothetical POSITA.
On this last point, the Board's phrasing suggests that an Applicant statement in the Brief about what the term means to a hypothetical POSITA would be sufficient. However, other decisions I've read suggest instead that you need evidence. This evidence can take the form of another reference that uses the term, or a § 1.132 declaration from a person of ordinary skill in the art about the meaning of the term.