Ex Parte Fuller

Board of Patent Appeals and Interferences

Jan 13, 2010

10950824 (B.P.A.I. Jan. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK WESTON FULLER
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Appeal 2008-006363
Application 10/950,824
Technology Center 3600
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Decided: January 13, 2010
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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

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§ 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

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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.
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Application 10/950,824

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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

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