Board Reverses Examiner for Overly Relying on a Dictionary Definition Without Consulting the Specification

February 3, 2012 – Blog Post

In Ex parte Bradley et al. (Appeal 2011-005978; Application serial no. 12/278,901), at issue was (1) whether the Examiner erred in relying on the intransitive verb definition of “flush” in finding that a reference discloses “a muffle that is flushed with shielding gas;” and (2) whether the Examiner erred in finding that a reference inherently disclosed a claimed limitation.

(1) The claims at issue disclosed a method for the flux-free brazing of components comprising flushing a muffle with shielding gas in order to create a shielding gas atmosphere having a specific oxygen content. The prior art disclosed introducing an unspecified amount of gas and recirculation thereof through a blower and the Examiner relied on the Random House College Dictionary definition of the word ‘flush’ – “to flow with a rush; flow and spread suddenly” to argue that this disclosure anticipated the claims. However, the specification and the claim indicated that “flush” is used with an object (i.e. the muffle), and thus the Appellants argued that the Specification indicates that the term “flush” modified the object muffle insofar as gas is supplied in a matter sufficient to flow through the muffle and replace the existing atmosphere to create a shielding gas atmosphere having the recited oxygen content. The Applicants argued that when the claim term “flush” is read in light of the specification it is clear that the disclosure of the cited reference does not anticipate the claimed limitation.

The Board reversed the Examiner’s anticipation rejection:

“By not relying mainly on the Specification, and instead overly relying on a dictionary definition of “flush” in a vacuum without consulting the guidance offered in the specification, which states that a “greatly excess quantity of [shielding] gas” is required to produce a “low-oxygen shielding gas atmosphere in the muffle,” further guiding the meaning of “flush,” the Examiner has reversibly erred. Because the Examiner did not otherwise account for the excess flow rate requirement implicit in the claim language, the Examiner failed to establish that claim 1 is anticipated by Kendziora.”

(2) The Examiner argued that the claimed oxygen content in the resulting shielding gas atmosphere was inherently present in the furnace of the cited reference. Appellants argued that the Examiner failed to meet the burden of inherency as the Examiner did not direct Appellants to any evidence in the reference that indicated the oxygen content in the brazing region, during brazing, would be less than about 50 ppm. Although the reference discloses that purified nitrogen gas is introduced into the furnace, the reference does not disclose the amount of gas that is introduced.

The Board reversed the Examiner’s anticipation rejection:

“Kendziora discloses that the purified nitrogen gas is introduced into the muffle (Col. 3, ll. 1-3), but does not further disclose, inter alia, the quantity or amount of gas introduced into the muffle. Contrarily, Appellants’ Specification discloses supplying a “greatly excess quantity of gas” to the brazing furnace muffle in order to achieve the necessary low-oxygen shielding gas atmosphere. (Spec. 3, ll. 4-19.) Because anticipation based on inherency may not be established by mere probabilities or possibilities, the Examiner has failed to establish a prima facie case of anticipation with respect to claim 1. See In re Robertson, 169 F.3d at 745.”