Wednesday, September 12, 2012

Ex parte Brochu: figures as prior art

From the BPAI decision Ex Parte Brochu -->

** Of "broadest reasonable interpretation" [BRI]:

During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

<-- **Of the use of figures in prior art to support rejections: -->
We cannot agree that the opposed portion (“second side”) of
extrusion 27, as shown in Figure 10 of Higginbotham, is “free” as claim 1
requires, because it is affixed by a screw or nail to the fascia board.
Further, while a patent drawing teaches all that it reasonably discloses and
can support an anticipation rejection, In re Mraz, 455 F.2d 1069, 1072
(CCPA 1972), we cannot agree that a preponderance of the evidence
13 supports the Examiner’s finding that even the opposite end of extrusion 27
as described in Figure 10 of Higginbotham is necessarily “free.” See
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000) (“patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue”); In re Wright, 569 F.2d
1124, 1127 (CCPA 1977) (arguments based on measurements obtained
from patent drawing are regarded as having little value where the patent
does not disclose that the drawings are to scale and absent any disclosure of
quantitative values).



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