In doing legal research today, I came upon this Board of Patent Appeals and Interferences (BPAI) decision that illustrates the importance of precise claim drafting. The case of Ex parte Allen Berger involves a 35 U.S.C. 102 rejection of a claim for a window panel invention. As a Patent Attorney in Miami with a full docket of patent cases, I'm constantly scanning for BPAI decisions that support my client's arguments at the Patent Office.
When the examiner rejects a claim, an applicant seeking a narrower construction must either show why the examiner's broader construction is unreasonable or amend the claim to state expressly the scope intended. In re Morris, 127 F.3d 1048,1057 (Fed. Cir. 1997). The BPAI focuses on the construction of the disputed limitation. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991).
In Ex parte Allen Berger, the Applicant recited "one pane" in his claim and the Examiner found a prior art reference with "two panes." The BPAI noted, however, that Applicant didn't define "one pane" in the specification, and it was reasonable to interpret "one pane" to mean "two panes" that have been integrated. The Applicant didn't provide any good reasons why the aforementioned interpretation was unreasonable. The court must construe pending claims as broadly as their terms reasonably allow. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). As a result, the BPAI affirmed the Examiner's decision.
The lesson here is that when you launch an "unreasonable interpretation" attack on an Examiner's rejection, you must: a) make sure the language of your claim limitation truly limits your claim as specified in your arguments and b) make sure you have a good, explicit reason why the Examiner's claim interpretation is unreasonable. Namely, providing a passage from Applicant's specification that supports your argument about why your claim is limited so as to exclude the scope of the Examiner's interpretation. This is why a precisely drafted claim is so important in patent prosecution.
