Ex Parte Jennings

Board of Patent Appeals and Interferences

Mar 20, 2009

10693129 (B.P.A.I. Mar. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BARBARA JENNINGS
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Appeal 2008-1888
Application 10/693,129
Technology Center 3700
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Decided: March 20, 2009
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Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
Appellant requests a rehearing under 37 C.F.R. § 41.52(a)(1) of our
Decision entered July 29, 2008 (“Decision”) in which we affirmed the
Examiner’s final rejection of claims 2, 3, 5-7, 13, 14, 18, and 21 as
anticipated and obvious in view of Jennings (U.S. Pat. No. 6,230,329 B1,
May 15, 2001).
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The claims
Claim 21, the only independent claim on appeal, is directed to a
garment to be “used by a caregiver to manipulate a patient.” The garment
has front and back “garment portions” and “a right tail portion and a left tail
portion forming a garment body interconnection” between the front and back
portions. The tail portions “pass[ ] through the groin area of said patient to
anchor said garment” to the patient’s body.
The Specification describes two different “tail” embodiments.
Figures 1, 2, 7A, and 8B show “double tail” embodiments; Figures 11A and
12B show “single tail” embodiments (Spec 4:19 to 6:12; Decision 4).
Figures 2 and 12B are representative and reproduced below:

Figure 2 shows a double tail garment; Figure 12B shows a single tail
garment.
Background
The claims were rejected by the Examiner as unpatentable over the
Jennings patent (Decision 2). It was undisputed that Jennings described a
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garment with a single elongated flap (FF11-3) – a structure similar to
Appellant’s single tail embodiment as illustrated above in Figure 12B. The
Examiner’s position in the Answer was that the elongated tail flap of
Jennings’ garment had “a right tail portion” and “a left tail portion” as
recited in claim 21 (Decision 3). Appellant argued that the Examiner
improperly interpreted the single tail flap described by Jennings to have right
and left portions. Thus, we stated the issue in the appeal to be as follows:
Did the Examiner err in finding that the tail flap on Jennings’ garment has “a
right tail portion” and “a left tail portion” as in appealed claim 21? (id.)
Giving “portion” its broadest reasonable interpretation in light of the
Specification, we determined that the phrase would be understood by
persons of ordinary skill in the art to mean “a part of the garment” (id. at 5).
Thus, we concluded:
“tail portion” as recited in claim 21 would reasonably be
understood by persons of ordinary skill in the art to read on: (1)
the double tail embodiment, where each “portion” is a discrete
part or tail of a two tailed garment and (2) the single tail
embodiment where “portion” refers to the left-side and right-
side parts of the single tail. With regard to (2), Figure 12B
shows a single tail with left and right portions demarcated by a
line through the middle.
(Id.). Based on this interpretation, we found that Jennings’ single elongated
tail with right and left sides met the limitations of claim 21 of “a right tail
portion and a left tail portion” (FF4-7).

1 FF refers to the “Findings of Fact” in the Decision.
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Request for Rehearing
In this Request for Rehearing, Appellant contends that the Board
“overlooked or misapprehended the fact that Applicant[’]s claim 21 recites
‘a right tail portion and a left tail portion’ of the ‘garment body’ not of the
flap in the Jennings” patent (Req. Reh’g 2). As argued in the Appeal Brief,
Appellant once again repeated her position that the Jennings patent does not
describe a “tail portion,” and that the claim language was improperly
construed “by writing the terminology of” appealed claim 21 “into the
disclosure of the Jennings” patent (id.). Appellant contends the “resort to a
dictionary has served to define a term [“portion”] outside the applicant's
field of art and inconsistent with the applicant’s explicit description and
illustrations of the claimed structure. Applicant’s specification will not
allow an interpretation of a single tail” (id. at 4).
Issue
Did we err in our interpretation of claim 21 by construing the claim
inconsistently with the Specification of which the claim is part?

Principles of Law
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words 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 contained in the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
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interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.” Morris,
127 F.3d at 1056.
The PTO should not “limit broad claim terms solely on the basis of
specification passages. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).”
In re Bigio, 381 F3d 1320, 1325 (Fed. Cir. 2004).
[T]the PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution. [In re Hyatt, 211 F.3d
1367, 1372.] The “broadest reasonable interpretation” rule
recognizes that “before a patent is granted the claims are readily
amended as part of the examination process.” Burlington Indus.
v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). Thus, a patent
applicant has the opportunity and responsibility to remove any
ambiguity in claim term meaning by amending the application.
In re Prater, . . . 415 F.2d 1393, 1404-05 (CCPA 1969).
Additionally, the broadest reasonable interpretation rule “serves
the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justified.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (quoting In re Yamamoto, 740 F.2d 1569, 1571-72
(Fed. Cir. 1984)).
Bigio, 381 F3d at 1324.
Analysis
Our interpretation of claim 21 is not inconsistent with the
Specification. We also applied the correct legal standard for claim
construction.
On pages 4-5 of the Decision, we addressed the disclosure in the
Specification, finding that the phrases “right tail portion” and “left tail
portion” were not explicitly defined in it (Decision 4). Appellant has not
challenged this finding.
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In the Decision, we stated that “the tails of both the double tail and
single tail embodiments are described as ‘portions’ of the garment (Spec.
14:8-9) apparently because they are part of and extend outwardly from the
garment body” (Decision 4-5). Consistent with this usage, we adopted a
general purpose dictionary meaning of “portion” to indicate a part of a
garment (id. at 5) and then concluded it was reasonable to interpret the claim
to cover the right and left sides of Jennings’ single tail embodiment (id.).
Appellant has not explained why our interpretation of “tail portion” to
read on two sides of a single tail is inconsistent with the Specification.
Appellant quotes at length from the Specification (Req. Reh’g 2-3),
including some of the same sections cited on page 4 of the Decision. We
acknowledge that the Specification in these passages uses the phrase “tail
portion” to refer to each discrete tail of the double tail embodiment.
However, claims are not limited solely on the basis of specification
passages. Bigio, 381 F.3d at 1325. As pointed out in the Decision, the
Specification also describes a specific embodiment with a single tail as in
the Jennings patent and uses the term “portion” to characterize it (Spec.
14:8-9; Decision 4). “Absent an express definition in their specification, the
fact that appellants can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.” Morris,
127 F.3d at 1056. Appellant contends, but has proffered no evidence that,
our interpretation is unreasonable or “outside” the field of art (Req. Reh’g 2-
3).
In the Specification, “single tail” and “double tail” garments are
described (Spec. 7:20 to 8:9) (Decision 4), but claim 21 recites a garment
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having a “right tail portion” and a “left tail portion” (Decision 4). There is
no evidence in this record that the right and left portions would be
understood by a person of ordinary skill in the art having read the
Specification to be synonymous with, and limited to, the “double tail”
garment described in the Specification. A patent applicant has the
“opportunity and responsibility to remove any ambiguity in claim term
meaning” by amending claims during the examination process. Bigio, 382
F.3d at 1324. For this reason, the courts have steadfastly stuck to the
“broadest reasonable interpretation” rule.

CONCLUSION OF LAW
We have considered Appellant’s Request for Rehearing, but decline to
modify our original Decision entered July 29, 2008.

REHEARING DENIED

clj

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