Ex Parte Smith

Board of Patent Appeals and Interferences

Jul 23, 2009

10754890 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRADEN LINDLEY SMITH
____________________

Appeal 2009-003370
Application 10/754,890
Technology Center 3700
____________________

Decided:1 July 23, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before LINDA E. HORNER, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-003370
Application 10/754,890

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SUMMARY OF DECISION
We REVERSE.

STATEMENT OF THE CASE
Braden Lindley Smith (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision finally rejecting claims 9-20. App. Br 5.
Claims 1-8 have been withdrawn. App. Br. 5. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

THE INVENTION
Appellant’s claimed invention is directed to a binding apparatus for
holding sheet materials in a notebook. Claim 9, reproduced below, is
representative of the subject matter on appeal.
9. A binding mechanism adapted for holding sheet materials
in a notebook, comprising:

a spine comprising a left edge, a right edge, an inner
surface, and an outer surface with at least one aperture
extending therethrough;

at least one strap interconnected to at least one of said
left edge and said right edge of said spine and having a first end
and a second end, said second end having at least one recess
positioned proximate thereto which has reduced width with
respect to said second end of said at least one strap;

a latching mechanism comprising a left edge, a right
edge, an inner surface, and an outer surface, with at least one
aperture extending therethrough, said spine adapted for
interconnection to the notebook with said latching mechanism
positioned below said spine, wherein said left edge of said spine
and said left edge of said latching mechanism are substantially
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parallel, and said outer surface of said spine and said inner
surface of said latching mechanism are slidingly engaged; and

wherein said latching mechanism has a first unlocked
position and a second locked position relative to said spine,
wherein said aperture of said spine and said aperture of said
latching mechanism are substantially overlapped in said first
unlocked position to receive said second end of said at least one
strap, and wherein said aperture of said spine and said aperture
of said latching mechanism are offset in said second locked
position wherein said second end of said at least one strap is
substantially secured to said spine. (Emphasis added.)

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wigginton US 1,876,374 Sep. 6, 1932
Jahn US 4,340,316 Jul. 20, 1982
Youngs US 2001/0051069 A1 Dec. 13, 2001
Webster’s Online Dictionary, excerpted from Webster’s Third New
International Dictionary, Unabridged, Merriam-Webster, Incorporated,
definition of “strap [1, n]” (1993).
Appellant seeks review of the following rejections:
The Examiner rejected claims 9-11 and 14-19 under 35 U.S.C.
§ 102(b) as being anticipated by Wigginton. Ans. 3.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Wigginton and Youngs. Ans. 7.
The Examiner rejected claims 13 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Wigginton and Jahn. Ans. 7.

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ISSUE
Appellant contends that the Examiner erred in making each of the
above rejections because it is not reasonable to read the post 5 of
Wigginton’s binder as the claimed “strap.” Br. 12. The Examiner contends
that based upon definitions 1b and 1c in Webster’s Online Dictionary, which
define a strap as a tang, post or rod, Wigginton’s post 5 is reasonably read as
the claimed “strap.” Ans. 8. In light of these contentions, the sole issue
presented is:
Has Appellant established that the Examiner erred in making each of
the above rejections because the broadest reasonable interpretation of the
term strap does not include the post of Wigginton?

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 applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of ordinary skill in the
art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d
1303, 1319 (Fed. Cir. 2005) (en banc). Concerning the use of dictionaries in
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determining the ordinary and customary meaning of a claim term, our
reviewing court has stated:
While dictionaries and treatises are useful resources in
determining the ordinary and customary meaning or meanings
of disputed claim terms, the correct meaning of a word or
phrase is informed only by considering the surrounding text.
This is why consulting dictionary definitions is simply a first
step in the claim construction analysis and is another reason
why resort must always be made to the surrounding text of the
claims in question, the other claims, the written description, and
the prosecution history. Our precedent referencing the use of
dictionaries should not be read to suggest that abstract
dictionary definitions are alone determinative. In construing
claim terms, the general meanings gleaned from reference
sources, such as dictionaries, must always be compared against
the use of the terms in context, and the intrinsic record must
always be consulted to identify which of the different possible
dictionary meanings is most consistent with the use of the
words by the inventor.
Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300
(Fed. Cir. 2003).

ANALYSIS
The definitions of “strap” proffered by the Examiner, which include a
post, are not consistent with the understanding of the term “strap” that one of
ordinary skill in the art would have gleaned from reading the Appellant’s
Specification. Dictionary definitions cannot be applied in a vacuum to define
the terms of a claim. Those definitions must be compared against the use of
the term in the context of the Specification.
The Specification discloses two embodiments of the binding device
having straps. Figs. 1-7 (first embodiment); Figs. 8-11 (second
embodiment). In the first embodiment, a resiliently deflectable strap 4 is
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threaded through an aperture in each sheet 6. Spec. 7:9-11. Once the strap is
threaded through the sheets 6, its end 40 is slid through slots 30, 38, thereby
curling it under a locking strip 28. Spec. 8:12-15; fig. 4. In the second
embodiment, in order to secure sheets 6 in the binder 10, resiliently
deflectable straps 4 are threaded through a slot-type aperture in the sheets 6.
Spec. 9:18-20. The straps are then resiliently deflected so that that an
aperture 5 at latching end 17 of the strap may be threaded onto a hook 14 of
the latching mechanism. Spec. 9:22 – Spec. 10:4; figs. 10-11. In each
embodiment, the strap is curled or resiliently deflected around a portion of
the sheets.
When the claims are read in light of the Specification, one of ordinary
skill in the art would understand that the term “strap” is used to define an
element that can wrap around a portion of the sheets, thereby strapping them
in place. App. Br. 13. This understanding is consistent with the ordinary
meaning of a “strap” as being material passing around an object to hold it
together or fasten it to something. See e.g., Webster’s Online Dictionary
(definitions 1a and 2a). In contrast, there is no indication that Wigginton’s
posts 5 are capable of being curled or resiliently deflected in order to wrap
about the sheets and strap them in place. For this reason we cannot agree
with the Examiner that Wigginton’s posts fall within the broadest reasonable
interpretation of the term “strap.”
For this reason we must conclude that the Examiner erred by rejecting
claims 9-11 and 14-19 as being anticipated by Wigginton. Since Youngs and
Jahn, as applied by the Examiner, do not cure the deficiencies of Wigginton,
the rejections of claims 12, 13, and 20 must also fall.
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CONCLUSION OF LAW
On the record before us, Appellant has established that the Examiner
erred in making each of the above rejections because the broadest reasonable
interpretation of the term strap does not include the post of Wigginton.

DECISION
For the above reasons, the Examiner's rejections of claims 9-20 are
reversed.
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) (2007).

REVERSED

vsh

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