Saturday, November 17, 2012

Obviousness rejection reversed in Ex parte Grube

In Ex parte Grube , the examiner's conclusion of obviousness is REVERSED:

First, the Examiner has misinterpreted “encapsulated” as that term is used in the ’452 application’s Specification and claims. During examination, claim terms are given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In general, words used in a claim are accorded their ordinary and customary meaning. Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). The ordinary and customary meaning of the term “encapsulate” is “to enclose in or as if in a capsule.” WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY 409 (1985). Thus, claim 1 requires that individual granules or small groups of granules be coated with a layer of dried acrylic latex before they are embedded in the substrate. The Examiner misinterpreted the term “encapsulated” to confine the claims to a specific embodiment of the finished product described in the ’452 application’s Specification. This construction is erroneous. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”).1

Second, the Examiner, based on the misinterpretation of the term “encapsulate” discussed above, made erroneous findings of fact concerning the structure of products that fall within the scope of the ’452 application’s claims. In particular, the Examiner erred in determining that the Specification describes a product made by a process that involves depositing unencapsulated granules on the substrate, adding liquid acrylic latex, and then embedding the granules in the substrate. Because of this incorrect finding, the Examiner also incorrectly found that the product of claim 1 had a structure that was not materially different from the structure of the products produced by the other method disclosed in the Specification.
The Examiner’s rejections of the ’452 application’s claims are based upon an incorrect claim interpretation and incorrect findings of fact. We, therefore, reverse these rejections.


Post a Comment

<< Home