Grasping at the Broadest Reasonable Interpretation

By Kevin L. Hartman

Ex parte Bucknell (PTAB July 5, 2017) (Appeal No. Appeal 2016-008097, in Application Serial No. 13/695,975) (before Hume, McCartney, and Beamer, APJ) (opinion by Hume, APJ)

In Ex parte Bucknell, the PTAB highlights two examples of how the broadest claim interpretation may and may not be reasonably used by an examiner. Bucknell’s invention is an apparatus for handling components with a “grasping element” that can be formed into different shapes to manipulate the components. An exemplary embodiment provided illustrates a robotic arm with grasping elements, where the grasping elements are able to hold and support automobile parts for painting. A grasping element may be thought of as a finger with an internal spring as a “resilient support,” which spring is enclosed in a stretchable cover that can be inflated with air or other fluids to change the exterior shape and provide a grip.

The PTAB affirmed the Examiner’s broad interpretation of the “resilient support” of claim 21 while reversing the Examiner’s broad reading of the resilient support being a “sole support” in claim 51.

Claim 21 recited a “grasping element having a resilient support, and not a rigid support.” Here, the Examiner rejected the claim under 35 U.S.C. § 102(b) as being anticipated by Frost (US 3,347,587), which describes an “article handling apparatus” (i.e., for picking fruit) that comprises an inflatable finger unit with an internal support. In one embodiment, the finger unit of Frost has an interior spring, and the Examiner interpreted this spring to anticipate the “resilient support” of the Appellant’s invention. The Appellant argued that the internal spring of Frost’s finger unit provides no resilient support because it can only move axially due to it being housed in a solid tube within the inflatable finger. However, in the context of the broadest reasonable interpretation, and without the Appellant’s specification describing the resiliency of the support, the PTAB upheld the Examiner’s  rejection. The PTAB found that in Frost, the movement of the support may be considered resilient in the axial direction, and thus the support in Frost could be a resilient support.

In the other part of the decision, the Examiner’s broad interpretation of claim 51 was reversed. The key issue was that the device included “a grasping element having a resilient support that is a sole support disposed therein,” whereas Frost uses both a spring and tube within the inflatable finger for support. The Appellant argued that the plain meaning of “sole” in this context means that the claimed resilient support is the single and only support. However, the Examiner took the broad meaning of “sole” to also include the meaning of “a lower part of something or the base on which something rests.” The PTAB found no reason from the specification (or the Examiner’s opinion) that the meaning of “sole” should be broadened beyond its ordina ry meaning.