Friday, March 12, 2010

"Broadest reasonable interpretation" and Frye

Note the outcome in the BPAI decision Frye (with Director Kappos sitting on the BPAI panel!) and the 271Blog post Time To Do Away With "Broadest Reasonable Interpretation [BRI]?" Paper Says "Yes!".

Ex parte NANCY C. FRYE

Before DAVID J. KAPPOS, Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
SHARON R. BARNER, Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent and
Trademark Office, MICHAEL R. FLEMING, Chief Administrative Patent
Judge, ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
KEN B. BARRETT, Administrative Patent Judges.



Appellant contends that the Examiner erred in finding that Snabb’s
forward section of substantially constant thickness, i.e., the section of the
insole having a slope of zero degrees, meets the rearward section of the
insole “at a point substantially halfway” with respect to the upper surface or
the outsole as called for in independent claims 1, 11, and 16. Appellant
contends that this erroneous underlying finding of fact pervades the
Examiner’s finding of anticipation of claims 1, 5, and 11 and the Examiner’s
ultimate conclusions of obviousness of claims 8, 14-16, 19, and 20.


The Examiner’s finding that Snabb discloses a meeting point located
“substantially halfway” (Ans. 5) as claimed rests on an unreasonably broad
of “substantially halfway”.


Our decision is limited to the finding before us for review. The Board
does not “allow” claims of an application and cannot direct an examiner to
pass an application to issuance. Rather, the Board’s primary role is to
review adverse decisions of examiners including the findings and
conclusions made by the examiner. See 37 C.F.R. § 41.50(a)(1) (“The
Board, in its decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by the
examiner”).2 The Examiner in the present case has not based any of the
rejections for our review on a theory that locating the claimed point
“substantially halfway” as claimed would have been obvious to a person
having ordinary skill in the art at the time of Appellant’s invention in view
of the prior art, and thus we take no position on this issue in the present


note also Ex parte Magnus Quist (BPAI 2008-001183) precedential, including the text:

e.g., Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008)
(“[W]e turn to Muniauction’s attempt to rebut this prima facie case with secondary
considerations of nonobviousness.”); In re Sullivan, 498 F.3d 1345, 1353 (Fed.
Cir. 2007) (“The claimed composition cannot be held to have been obvious if
competent evidence rebuts the prima facie case of obviousness.”); In re Kahn, 441
F.3d 977, 985-86 (“‘On appeal to the Board, an applicant can overcome a rejection
by showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.’”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 2006)); In re Oetiker, 977
F.2d at 1445 (“An observation by the Board that the examiner made a prima facie
case is not improper, as long as the ultimate determination of patentability is made
on the entire record.”) (citing In re Piasecki, 745 F.2d at 1472; In re Rinehart, 531
F.2d at 1052).


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