10483129 (B.P.A.I. Nov. 29, 2010)

Ex Parte Krischer

Board of Patent Appeals and InterferencesNov 29, 2010

10483129 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/483,129 07/22/2004 Achim Krischer 76775.6 7367 7590 11/29/2010 Francis C Hand Carella Byrne Bain Gilfillan Cecchi Stewar & Olstein 5 Becker Farm Roseland, NJ 07068 EXAMINER DEUBLE, MARK A ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 11/29/2010 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ACHIM KRISCHER ____________________ Appeal 2009-004194 Application 10/483,129 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004194 Application 10/483,129 2 This is a response to a Request for Rehearing in Appeal 2009-004194. We agree with Appellant that claim terms are to be given their plain meaning unless the plain meaning is inconsistent with the specification. Req. Reh’g 3 citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Appellant argues that the links or plain modules 102 and 104 of Figure 6 of Lapeyre are not sequentially arranged. Req. Reh’g 2. “Sequentially arranged” was not defined in Appellant’s Specification. The dictionary definition of “sequence” is merely “following of one thing after another.” RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 1747 (2d Unabridged ed. 1983). It cannot be reasonably argued that the links or plain modules 102 and 104 do not follow one another as the conveyor travels along its designated path. We further note that the links of Figure 6 are sequentially numbered. Appellant argues that the links 102 and 104 of Lapeyre are not connected to one another. We agree that they are not so connected. See Req. Reh’g 3. A connection is not required by the language of independent claim 51. Appellant argues that the conveying member modules 96, 98, and 100 are not mounted on the plain modules 102 and 104. Req. Reh’g 3. Once again, the dictionary defines “mount” as “to attach to or fix on or in a support, setting, backing etc.” RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 1255 (2d Unabridged ed. 1983). We are of the view that the conveying member modules 96, 98, and 100 are attached on and supported by the plain modules 102 and 104. Appellant provides no argument or evidence that our claim construction was in error, other than arguing that it does not import limitations from the specification or drawings into the claims. It would be Appeal 2009-004194 Application 10/483,129 3 error on our part to import limitations in the manner suggested. The Federal Circuit has counseled the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages. In re Zletz, 893 F.2d at 321. Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition. See, e.g., Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-09 (Fed. Cir. 2004) (explaining the requirement for an express disclaimer in either the specification or prosecution history). Appellant correctly states that claims are to be given their broadest reasonable interpretation at the PTO. Appellant then cites an infringement case, Elekta Instrument SA v. O.U.R. Scientific International, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) wherein claims were not given their broadest reasonable interpretation but were interpreted by looking to the specification for definitions of claim limitations. We stand by our claim construction and find no misapprehension therein. Finally, Appellant mentions that he considered the rejection based on Figure 6 to be a new ground of rejection. If that were indeed the case, the recourse available to Appellant would have been to petition the Technology Center Director to designate the rejection as a new ground. By responding to the ground in the Reply Brief, the Board correctly assumed that Appellant had been given notice of the rejection and a fair hearing to respond. Accordingly, we have granted the Request for Rehearing to the extent that we have reviewed our decision for matters overlooked or misapprehended. But to the extent that the Request seeks a change in our prior decision, it is denied in its entirety. The Board’s decision is now final for the purposes of judicial review. Appeal 2009-004194 Application 10/483,129 4 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED nlk Francis C Hand Carella Byrne Bain Gilfillan Cecchi Stewar & Olstein 5 Becker Farm Roseland NJ 07068