Ex Parte FullerDownload PDFBoard of Patent Appeals and InterferencesJan 13, 201010950824 (B.P.A.I. Jan. 13, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARK WESTON FULLER __________ Appeal 2008-006363 Application 10/950,824 Technology Center 3600 __________ Decided: January 13, 2010 __________ Before WILLIAM F. PATE, III, JOHN C. KERINS, and STEVEN D.A. MCCARTHY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the decision entered September 24, 2009 (“Decision”). In that Decision, the rejection of claims 1, 4, 5, 7-9 and 11-18 under 35 U.S.C. § 102(b) as being anticipated by Lux (US 5,235,832, issued Aug. 17, 1993) was affirmed. Requests for Rehearing are limited to matters misapprehended or overlooked by the Panel in rendering the original decision. 37 C.F.R. Appeal 2008-006363 Application 10/950,824 2 § 41.52(a)(1). Appellant’s Request for Rehearing (“Request”) asserts that, in affirming the rejection of the claims on appeal, the Panel employed an overly broad claim construction that “totally ignores the written description of the present application which teaches that movement of the thumbturn actually retracts the control lug as anyone would expect from the quoted claim language.” (Request 2). The claim language referred to is found in claim 11, and states that the method includes the step of, “moving the thumbturn to retract the control lug”. Appellant’s Specification indeed teaches two embodiments in which movement of the thumbturn actually retracts the control lug. As our reviewing court has advised on more than one occasion, however: “Specifications teach. Claims claim.” SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n. 14 (Fed. Cir. 1985)(en banc); see also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001). As we noted in our Decision, the U.S. Patent and Trademark Office is charged with giving claim terms their broadest reasonable meaning in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The scope of a claim cannot be narrowed by reading limitations from disclosed embodiments into the claim where such limitations have no express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Appellant is effectively seeking to have us read into the claims specific features of explicitly disclosed embodiments, relying only on the Appeal 2008-006363 Application 10/950,824 3 bald assertion that, “anyone would expect from the quoted claim language” that movement of the thumbturn will retract the control lug. We decline to do so, as there is no express basis in the claims for this limitation. While Appellant’s Specification does not explicitly disclose an embodiment in which the control lug is withdrawn into the shell of the thumbturn assembly1 by action other than movement of the thumbturn, Appellant at least twice affirmatively states that the intention is that the scope of the invention is not to be limited to the illustrated embodiments. (Spec., paras. [0012], [0028]). Appellant’s contention is, in essence, that its Specification describes only embodiments in which the control lug is moved by movement of the thumbturn, and therefore the claims must be construed as being limited to that operation. Our reviewing court has, however, expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1091 (Fed. Cir. 2003); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). Appellant’s proffered interpretation requires that the term “to” or “to retract” be interpreted as requiring, in the claimed method, that movement of the thumbturn itself necessarily retracts the control lug.2 The Examiner interpreted the term “to” as meaning or as being sufficiently broad to 1 Appellant’s Specification does not actually use the claim term “retract”, which seemingly contributed to the Examiner’s alternative claim construction, that axially moving the thumbturn in Lux by pulling on the thumbturn once the control lug was freed, would retract the control lug from mechanism 100. (See Answer 4). 2 We note, in this respect, that in Appellant’s disclosed embodiments, there is a movement of the thumbturn that does retract the control lug, as well as movements of the thumbturn that do not retract the control lug. Appeal 2008-006363 Application 10/950,824 4 encompass the expression, “in order to”. (See Answer 8) (“[I]t is required, and essential in Lux et al that moving of the thumbturn 202 occurs, in order to retract the control lug.”) (emphasis added). That expression is the equivalent to, “for the purpose of”. Significantly, these expressions do not have a temporal aspect. Further, the claims do not recite sufficient structural limitations directed to the locking mechanism on which the method is to be performed that compel us to find that moving the thumbturn ineluctably results in the retraction of the control lug. Appellant’s contentions in the Request have not persuaded us that there was any misapprehension in construing the claims on appeal in arriving at the decision to affirm the rejection of the claims. The Request is therefore denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). REHEARING DENIED mls KEITH M. 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