Ex parte Grider
Appeal 2013-003930; Appl. No. 12/493,514; Tech. Center 2800
Decided: January 22, 2015
The application on appeal was directed to an auto light assembly with a charging port. A representative claim on appeal read:
1. An automotive vehicle capable of receiving power from an electrical power grid, the vehicle comprising:The dispositive issue on appeal was the meaning of "exterior lamp assembly." The Examiner rejected claim 1 as anticipated by Austin. The Examiner mapped the claim's "electrical port" to electrical connector 170 in Austin's Fig. 22, the "illumination source" to the "headlamp in Fig. 22," and the "exterior lamp assembly" to reference number 172 in Fig. 22.
a battery charger; and
an exterior lamp assembly including (i) an illumination source and (ii) an electrical port configured to be electrically connected with the electrical power grid, wherein the electrical port is electrically connected with the battery charger.
During prosecution the Applicant argued that Austin's 172 was not properly understood as an "exterior lamp assembly." The Applicant pointed out that Austin described 172 as a "front or rear surface." ("The electrical connector 170 [can be] located in a front or rear surface [fascia] 172, 174 of the vehicle.") According to the Applicant, 172 was best understood as a fascia or a surface of the vehicle's bumper cover.
In a Final Office Action, the Examiner responded that this surface "clearly includes an exterior lamp, thus making interpreting item 172 as an exterior lamp assembly reasonable."
On appeal, the Applicant reiterated the earlier argument, and elaborated as follows:
The examiner argues that because Austin's front fascia 172 at least partially surrounds Austin's exterior lamp assembly, that front fascia 172 is somehow part of the exterior lamp assembly. This logic, however, is flawed. By analogy, a tire can surround the wheel on which it is mounted. This does not mean that the tire is somehow part of the wheel. Similarly, a shoe can surround a foot. This does not mean that the shoe is somehow part of the foot. Hence, Austin's fascia is not part of Austin's exterior lamp assembly.The Examiner maintained this position on appeal. The Examiner responded to the Appeal Brief arguments by asserting that "front surface (172) of Austin is clearly an exterior device, which includes a headlamp/illumination source (Fig. 22), therefore reading on an exterior lamp assembly." The Examiner then explained that while the Applicant had argued for a narrowed interpretation, no such features were present in the claim. Finally, the Examiner noted that the Applicant had not provided any evidence that reading the claimed feature on Austin's surface 172 was unreasonable.
The Applicant filed a Reply Brief to rebut points raised in the Examiner's Answer. The Applicant first argued that the Examiner's interpretation was inconsistent with the interpretation of a person of ordinary skill.
Austin's "front or rear surface" language does not refer to the clear surface covering Austin's headlamps. Instead ... one of ordinary skill would interpret "front or rear surface 172, 174" as referring to Austin's fascia, which as known in the art do not include headlamp assemblies. Austin's windshield is an "exterior device" in as much as Austin's headlamp assembly is an "exterior device." One of ordinary skill upon reading Austin's "front or rear surface 172, 174" language and referring to Figure 22, however, would not conclude that Austin is suggesting that the power cord could be plugged into Austin's windshield for obvious reasons.Finally, the Applicant presented additional technical reasoning as to why a POSITA would not understand Austin to disclose a lamp assembly included in the bumper surface 172:
Moreover, locating Austin's electrical connector 170 in the clear surface covering Austin's headlamps would present challenging issues related to, among other things, packaging the electrical outlet components in and around the headlamps of the assembly (e.g., the electrical connector and associated wiring would have to be placed such that it does not obstruct the light output by the headlamps and is properly sealed to prevent water and debris from entering the headlamp cavity, etc.) If Austin had intended to disclose such an arrangement, he would at least have made some mention of these issues to provide an enabling disclosure.The Board found the Examiner's interpretation to be unreasonable, and reversed the anticipation rejection. The Board explained as follows:
Although Figures 20 and 22 of Austin show a headlamp adjacent to electrical connector 170, there is no disclosure in Austin, either in the Figures or description, that an electrical port be included as part of an exterior lamp assembly of an automotive vehicle, as required by Appellants’ claims. The Examiner does not direct us to any disclosure in Austin that teaches that front surface 172 or rear surface 174 is part of an exterior lamp assembly. Nor does the Examiner direct us to evidence in Appellants’ Specification or elsewhere in the intrinsic or extrinsic record that would support a construction of “exterior lamp assembly” that is broad enough to encompass either front surface 172 or rear surface 174 in Austin’s Figures 20–23.My two cents: Broadest Reasonable Interpretation is often a dispositive issue, but not all Applicants realize this early enough in prosecution. Here the Applicant did hit the BRI issue head on, and kept arguing about it until the very end (Reply Brief). Surprisingly, although the focus was BRI, nobody brought in dictionary definitions or other evidence of meaning to a POSITA. The Applicant's argument instead used analogies.
I thought the Applicant made a compelling argument, and the Board was persuaded in this case. However, I think arguing by analogy is risky, as the Board is sometimes dismissive of analogies or hypotheticals.
Neither the Applicant nor the Board focused on this, but I think "assembly" is the heart of the argument. The Examiner's position seemed to be: the lamp was within / part of / included in the fascia; the fascia was therefore a lamp assembly; the fascia was on the outside; the fascia was therefore an "exterior lamp assembly."
But I say "assembly" implies more than just physical surrounding. To me, "assembly" implies a collection of parts that are recognizable to the POSITA as being part of a whole thing. So an LED, an electrical socket, a surrounding frame, and a bracket might all be part of a "lamp assembly". Sure, we can argue about exactly which parts are included in a particular assembly. But here, how can you say, with a straight face, that a fascia/bumper is understood by a POSITA as the entire collection of parts that together make up a "lamp assembly"?