Broadest Reasonable Interpretation does not allow broadening from a dictionary definition

Takeaway: In today's post I'll discuss two cases where the Board found that Broadest Reasonable Interpretation does not mean the Examiner can start with a dictionary definition and broaden from there.

In Ex parte Butler, the application was directed to a positioning control system for lithographic printing, and the claim term at issue was "a partial order filter". The claim was rejected as anticipated by a reference (Yuan) teaching a photolithography system. The reference system used a filter and listed notch, low pass, and high pass filters as examples.

Board affirms obviousness when Applicant misunderstands Examiner's combination

Understanding the Examiner's position is key to advancing prosecution. Before appeal, it's best that the Applicant understands what the Examiner is saying, and that the Examiner understands what the Applicant is saying. Certainly a misunderstanding was at the root of the appeal of an obviousness rejection in Ex Parte Sudhardja. Sometimes the Examiner doesn't explain clearly, sometimes the Applicant just doesn't get it, and sometimes both forces are at work. What happened here?

Ex Parte Sudhardja
Appeal 2010-004119; Application No. 11/196,651; Tech. Center 2100
Decided  November 5, 2012

The application on appeal was directed to a "self-repairing" graphics processing unit (GPU) that included redundancy features. The application was a Continuation-In-Part. The parent application described redundant functional units in an integrated circuit; the CIP added GPU-specific details.

Board reminder that Federal Circuit appeal, not PTAB Rehearing, is the appropriate forum to reargue issues already decided by the PTAB

The PTAB Rehearing decision Ex parte Brozell criticized an Applicant for filing a Request for Rehearing in order to argue that the Board had erred on claim construction and on the conclusion of obviousness:

[A] request for rehearing is not an opportunity to express disagreement with a decision. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided.
(Emphasis added.)