Ex parte 500 Group
Appeal 2010-010428; Appl. No. 90/008,998; Patent 6,601,930; Tech. Center 3900
Decided: October 26, 2010
One of the independent claims on appeal read:
1. An apparatus for transporting articles between working locations, comprising:The Patentee appealed the Examiner's final rejection as obvious over Spielhoff in view of Kennedy. Spielhoff was a German patent, and the Examiner included a PTO translation with the Final Office Action. One of the issues on appeal was the meaning of the language highlighted above.
a base container having an interior space in which articles to be transported can be stored,
one or more rotatable ground engaging wheels mounted to the apparatus toward the bottom of said apparatus ...
at least one removable container having [four elements]...
said at least one removable container being removably secured above said base container when said apparatus is at a working location ...
The Examiner alleged that FIG. 3 of Spielhoff disclosed the base container as 4' and removable container as 8'. The Examiner also provided annotated FIG. 3 (below) bearing the added label "removably secured region for removable container."
|Spielhoff Fig. 3|
|Spielhoff Fig. 4|
In this rejection, the Examiner has used such a colloquial and overly broad interpretation of the word "secured" as used in the present claims. That is, as set forth in detail above, "secured" means "fixed," "attached" and "fastened." Two objects that are "secured" to each other may not be separated absent the removal/separation of that which is "securing" the two objects together. ... [T]he broadest reasonable interpretation of "securing" elements together, as recited in the claims, requires that the elements be "fixed," "attached" or "fastened" together.The Applicant's claim construction argument also mentioned various securing mechanisms disclosed in the specification, but explicitly stated that these features should not be read into the claims.
The Examiner's Answer specifically explained how Spielhoff's cabinet was encompassed by various definitions of "secure" provided by the Examiner and by the Applicant:
- One definition of "secured" proffered during reexamination by the Examiner is "to relieve from exposure to danger: act to make safe against adverse contingencies" (Merriam-Webster's Collegiate Dictionary, 10th ed., page 1056). Under this definition the toolbox is relieved from exposure when placed in the region defined by the Examiner.
- Further, another definition of "secured" supplied by Appellant is "firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way" (Brief at top of page 8). Under this definition the toolbox is firmly placed in position and unlikely to give way when placed in the region defined by the Examiner.
- Further, another definition of "secured" supplied by the Appellant is "to make firm or tight; fasten" (Brief at top of page 8). One definition of "tight" is "strongly fixed or held: secure" (Merriam-Webster's Collegiate Dictionary, 10th ed., page 1234). Under this definition the toolbox is made tight by being strongly held when placed in the region defined by the Examiner.
The Board agreed with the Examiner's interpretation. The Board first noted that Specification did not expressly define the claim term ("secured"), nor did it use the other terms (“fixed,” “attached,” fastened”) to describe the relationship of the removable container and the base container. To the contrary, the Specification states that the securing function can be accomplished “in any manner, for example, by a frictional fit.” Thus, the Specification "makes it clear that the term is being used, and should be construed, broadly."
Moreover, while the Applicant asserted that every definition of "secure" uses the word "fasten," the Board found that some of the definitions had a broader meaning. The Board elaborated as follows:
For example, one of the definitions of “secured” relied upon by Appellant is “firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way.” (App. Br. 8, Ex. 9 (emphasis added)) Thus, a container that is “inserted” into a compartment, as in Spielhoff, would be “secured” in the compartment because it had to be placed in the compartment and would be unlikely to come loose or give way. In this respect, we further note the provision of a lid (not numbered) for the compartment in the tool cart of Spielhoff, which furthers securing of the removable case.The Board then concluded that the Applicant's interpretation (fastening required) was too narrow. Instead, "the arrangement of Spielhoff, where the container is inserted into the top compartment, is encompassed by Appellant’s claims."
My two cents: The Board got this one wrong. I'll agree with that the Broadest definition here – firmly fixed of place in position and unlikely to come loose – is also Reasonable. But I say the Board overreached in applying the reference to the claims.
Simply put, there was zero evidence in the record that a toolbox placed in Spiehoff's compartment would be unlikely to come loose due to friction along the sides of the compartment. The crude drawings in Spielhoff's suggest that the container is roughly the same size as the compartment, but there isn't enough detail to say that the sizes are close enough to achieve the function implied by "secure."
I give the Applicant points for making claim construction the heart of the argument, but unfortunately Applicant didn't sieze on this particular issue that is implicated by the broadest definition.
The way I see it, the Board improperly speculated about the teachings of the reference. But this could have gone another way.
The Board could have treated the claim language "secured ... when said apparatus is at a working location" as intended use, and then taken the position that the compartment need only be capable of fixing a container in place. Under that theory, the reference anticipates if there exists a hypothetical compartment and a hypothetical container having relative sizes such that friction fit keeps the container in place. Right? Or is hypothetical not good enough?