Ex Parte Yananton

Board of Patent Appeals and Interferences

Jan 12, 2012

11169738 (B.P.A.I. Jan. 12, 2012)

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.
11/169,738 06/30/2005 Patrick Yananton 1747 4053
33055 7590 01/13/2012
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
01/13/2012 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 PATRICK YANANTON
____________________

Appeal 2010-005027
Application 11/169,738
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL C. ASTORINO, and
JAMES P. CALVE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF CASE
This is a response to a Request for Rehearing. Requests for Rehearing
are limited to matters overlooked or misapprehended by the Panel in
rendering the original decision. See 37 C.F.R. § 41.52.
Appeal 2010-005027
Application 11/169,738
2
OPINION
The sole issue raised by Appellant is whether, by virtue of paragraph
[0029] of Appellant’s Specification, Appellant defined the term “adhesion
enhancing agent” to mean a substance that remains chemically inert with
regard to the applied active ingredient. Request 2-3.
In the litigation context, our reviewing court has debated the issue of
construing a claim such that the “metes and bounds of what the inventor
claims extend beyond what he has invented or disclosed in the
specification.” See Retractable Techs., Inc. v. Becton, Dickinson & Co., 659
F.3d 1369, 1369-73 (Fed. Cir. Oct. 31, 2011) (Moore, dissenting). However,
during examination, where an applicant has the ability to amend his claims,
the PTO is obligated to give claims their broadest reasonable interpretation
consistent with the specification, and to read claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). While the specification should be used to interpret the
meaning of a claim, it is improper to confine the claims to the embodiments
found in the specification. In re Trans Texas Holdings Corp., 498 F.3d 1290,
1299 (Fed. Cir. 2007) (citations omitted). In addition to the specification,
dictionary definitions are also pertinent in this analysis. Id. “An inventor is
free to define the specific terms used to describe his or her invention, [but]
this must be done with reasonable clarity, deliberateness, and precision.” In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Paragraph [0029] of Appellant’s Specification states that the term
“adhesion enhancing agent” is synonymous with the term “cling agent.” In
relevant part, paragraph [0029] makes two statements regarding the “cling
agent.” First, “the term ‘cling agent’ refers to any ingredient or compositions
Appeal 2010-005027
Application 11/169,738
3
of ingredients that can be used to dip, tumble, spray or otherwise coat
individual fibers, crossovers and cellular structures of any fibers, nonwoven,
etc. pad.” Id. Second, “[t]he critical feature to any of the cling agents or
adhering substance is that they remain chemically inert with regard to the
applied active ingredient.” Id.
The first statement is clearly a lexicographic definition—a very broad
one. The second statement describes a “critical feature” of any of the cling
agents or adhering substances. While the second statement more narrowly
limits cling agents to a particular type, i.e., a preferred embodiment – those
that remain chemically inert with regard to the applied active ingredient – it
would not be regarded by one of ordinary skill in the art as altering the
meaning of the term “cling agent” itself. This is particularly true in light of
the fact that Appellant presents one and only one clear, deliberate and
precise definition of the term – “any ingredient or compositions of
ingredients that can be used to dip, tumble, spray or otherwise coat
individual fibers, crossovers and cellular structures of any fibers, nonwoven,
etc. pad.” This statement demonstrates Appellant’s intent for the term “cling
agent,” and therefore the synonymous “adhesion enhancing agent,” to
include any ingredient or compositions of ingredients that can coat substrate
fibers in a variety of ways. Thus, it is this broad definition that controls our
interpretation of the term. This broad definition contains no language
confining the meaning of “adhesion enhancing agent” to an agent that
enhances adhesion specifically by a mechanism other than a chemical bond.
Opinion 5. Appellant chose to use language in the claims that is broader than
the language used to describe the preferred embodiments and we will not
import language used to describe the preferred embodiments into the claims.
Accordingly, we do not agree with Appellant that, when read in light of the
Appeal 2010-005027
Application 11/169,738
4
Specification, one of ordinary skill in the art would understand “adhesion
enhancing agent” to mean a substance that remains chemically inert with
regard to the applied active ingredient.
For the forgoing reasons, Appellant failed to convince us that any
matter has been misapprehended or overlooked in rendering of our original
Decision. Reconsideration has been Granted to the extent that we
reconsidered our previous decision. It is Denied with respect to making any
changes thereto.

DECISION
Upon reconsideration, the rejections of claims 1, 2, 4-7, 11, 12, and
15-19 remain affirmed.

RECONSIDERATION DENIED

nlk