Yesterday, the Board of Patent Appeals and Interferences (BPAI) issued a ruling touching upon the "broadest reasonable interpretation" concept, resulting in a reversal of a Patent Examiner's 35 U.S.C. §103 obviousness rejection of an earphone invention belonging to French firm Technofirst. As a Miami Patent Attorney, this case was interesting because it illustrates another avenue for reversing a 35 U.S.C. §103 obviousness rejection on appeal.
The gyst of the BPAI decision can be read in the following excerpt: "the Examiner is correct that Appellant has not specifically defined that term therein. However, while giving claim terms their broadest reasonable interpretation is correct and proper, such interpretations need to be made in view of the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). With such a standard, we do not find the Examiner's alternate interpretations to be consistent with the instant Specification ... We can find no support in the Specification for such an interpretation of 'complex polynomial function.'"
Lesson learned: As a patent practitioner, even if your case suffers from lack of definition of a key claim term, and the Examiner hits you with a broad reasonable interpretation of the claim term, his interpretation must be consistent with the specification. I.e., no matter how reasonable an Examiner's interpretation of a claim term, he cannot get away with the interpretation if it's not consistent with the specification. So always check the Examiner's interpretation against the specification.
See also the the following excerpt: "In addition, Appellant has proffered declaration evidence that one of ordinary skill in the art, at the time that the application was filed, would have understood 'complex polynomial function' to require a filter of order higher
than first. While Dr. Carme's opinion cannot be said to come from a disinterested party, we find that the Examiner has provided nothing to counter his opinion other than a finding of the plain meaning of the term. While 'complex' can certainly connote complex numbers, we find no support for such a contention in the Specification. As such, we do not agree with the Examiner."
The above excerpt highlights the value of 1.132 Declarations. I have rarely seen Examiners provide a substantive response to a 1.132 Declaration. Even though the Declaration comes from your inventor, who is admittedly an interested party, the BPAI does give the declaration weight and if the Examiner does not adequately rebut it, this weighs in the Appellant's favor. Lesson learned: use 1.132 Declarations whenever possible, as it provides another element that may weigh in your favor on appeal.
