Ex Parte MacLennan

Board of Patent Appeals and Interferences

Feb 28, 2012

11534131 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL J. MACLENNAN
____________________

Appeal 2010-003163
Application 11/534,131
Technology Center 3600
____________________

Before: KEN B. BARRETT, PHILLIP J. KAUFFMAN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003163
Application 11/534,131
2
STATEMENT OF CASE
Appellant seeks review of the Examiner’s rejection of claims 1-61
under 35 U.S.C. § 103(a) as unpatentable over Simon (US 7,040,591 B1; iss.
May 9, 2006) and Biasini (US 4,372,518; iss. Feb. 8, 1983). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Independent claim 1 is the sole independent claim on appeal and is
representative of the claimed subject matter:
1. A book-holding device comprising
a handle, a spine-holder, a binding strap, a pair of arms,
and a spring-loaded wire connected to each of the pair or arms,
the handle further comprises a top end,
the spine-holder further comprises a top and bottom, the
top of the spine-holder further comprises a first receiver and a
second receiver and the bottom further comprises a ledge, the
first receiver receives the top end of the handle to form a rigid
connection between the handle and the spine-holder,
the binding strap further comprises a first end and a
second end, the first end is connected to the bottom ledge, the
second end is connected to a knob, and the pair of arms
rotatably connected to a middle of the spine-holder.

OPINION
The Examiner interpreted the “handle” of claim 1 to be “something to
be grasped by hand.” 2 Ans. 5. Appellant asserts that the Examiner’s

1 It appears that claim 6 is before us on appeal, but was inadvertently omitted
from the Claims Appendix. Office Action dated Apr. 7, 2008, at 2; Ans. 2-
3; App. Br. 1, 3, 18-19.
2 Appellant argues claims 1-6 as a group, and we select claim 1 as
representative. App. Br. 6-17; see 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2010-003163
Application 11/534,131
3
interpretation is unreasonably broad and that the interpretation of “handle,”
as called for in claim 1, that most naturally aligns with the Specification is,
“the part that is designed to be held or operated with the hand.” App. Br. 6-
17; Reply Br. 1-3. Appellant also asserts that when “handle” is properly
construed, claim 1 calls for the device to be “picked up and operated by the
handle” (grasped by hand), because book-holding devices that are unsuitable
to be held in one hand by the handle are expressly disavowed. App. Br. 15-
17; see also Reply Br. 1-3 (similarly asserting that claim 1 calls for the
handle to be “held by hand”).
We cannot agree with Appellant’s assertion that if “handle” is
properly construed, claim 1 calls for a device that is suitable to be held in
one hand by the handle. The design of the handle is but one of several
factors that influences whether the device may be picked up and operated by
hand. Other influences include the total weight of the device (to include the
handle), and the weight of the book being held.3 See Spec. 1:11-12
(referring to the device as a whole, not just the handle); 2:19-3:1 (noting the
effect of the book’s weight). We consider Appellant’s assertion to the extent
it can be seen as an argument that the book-holding device of claim 1 (vice
the handle of that device) must be capable of being held in one hand by the
user.
The Specification describes that the present invention “relates
generally to devices that hold books, and more specifically to book-holding
devices that are suitable to be held in one hand.” Spec. 1:11-12. The
Specification also describes that prior art book holders tend to be heavy or
cumbersome and that the claimed device is lightweight so that when the

3 Other factors are involved, such as the strength of the user and the
configuration of the book-holding device.
Appeal 2010-003163
Application 11/534,131
4
device is used with a reasonably sized book, the device may be held in one
hand by gripping the handle. Spec. 1:20-21; 2:19-3:1; 3:16-17. The
Specification also describes that “[t]he ultimate scope of the invention is to
be limited only by the claims that follow the specification.” Spec. 2:3-4.
We examine claim 1 in light of these disclosures.4
The preamble of claim 1 recites “a book-holding device,” not a book-
holding device suitable to be held in one hand. Further, claim 1 does not
recite the dimensions or weight of the device, or otherwise call for the
device to be capable of being held in one hand. In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997) (It is Appellant’s burden to precisely define the
invention.). Because the language of claim 1 is broader than the
Specification, we do not import the limitation that the book-holding device
is suitable to be held in one hand.5 See SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding
the claim language may be aided by the explanations contained in the
written description, it is important not to import into a claim limitations that
are not a part of the claim. . . . [A] particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.” (citation omitted)).

4 “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) (quoting Giles S. Rich, The Extent of the Protection
and Interpretation of Claims - American Perspectives, 21 Int’l Rev. Indus.
Prop. & Copyright L. 497, 499 (1990)).
5 We give claim terms the broadest reasonable interpretation consistent with
the Specification. See e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (citations omitted). Appellant’s citation (App. Br. 15)
to Astrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333 (Fed. Cir. 2004), is
inapplicable because, in that case the Federal Circuit did not construe the
claims using the broadest reasonable interpretation consistent with the
Specification standard.
Appeal 2010-003163
Application 11/534,131
5
Given this claim construction, Appellant’s contention that Simon does
not disclose a book-holding device capable of being held in one hand fails
because it is based on a limitation not present in claim 1. In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail . . .
because . . . they are not based on limitations appearing in the claims.”).
As such, we sustain the rejection of claims 1-6.

DECISION
We affirm the Examiner’s decision to reject claims 1-6.
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).
AFFIRMED

nlk