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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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BPAI Affirms Rejection of Claims Due To Broad Defining Language Found in Specification

Ex parte Harvey, (BPAI Jul. 15, 2009)

In this appeal, the Applicants appealed the Examiner's final rejections of twenty-two claims as being either anticipated or obvious in light of the prior art. The Board of Patent Appeals and interferences ("BPAI"), in an opinion by Administrative Patent Judge Easthom, affirmed.

The invention at issue related to an apparatus for detecting unauthorized use of a vehicle comprising "an input device for allowing entry of vehicle operator identification information" and "a processor for determining whether said vehicle is in operation, and for initializing an action if a vehicle operator has not been authorized to operate said vehicle prior to a predetermined event." The main issue in the appeal was whether "the Examiner erred in finding that [the anticipatory reference] teaches 'allowing entry of vehicle operator identification' and 'initiating an action if the vehicle operator has not been authorized to operate said vehicle'" as set for in one of the independent claims of the patent application. The focus of the BPAI opinion was on the first element, "allowing entry of a vehicle operator identification information."

The Applicants' specification stated that the vehicle operator identification information "typically comprises a passcode" and may also comprise "other information." The specification also defined the term "validation" or "validate" as "to determine whether or not a vehicle operator is authorized to operate the vehicle." The term "vehicle operator" was defined in the specification as "any person who attempts to become validated." The anticipatory prior art disclosed a vehicle theft-prevention device including a key transponder that generates an "identification code."

The BPAI pointed out that the PTO "is obligated to give claims their broadest reasonable interpretation during examination." However, "a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Further, "[i]t is the applicants' burden to precisely define the invention, not the PTO's."

The Examiner had found that an "identification code" described in the prior art reference constituted "vehicle operator identification information." While the Applicants argued that the prior art reference described "a validated or authorized key, not a validated or authorized operator," the BPAI pointed back to the Applicants' specification which stated that the vehicle operator identification information "typically comprises a passcode" and can also comprise "other information" and that the term "vehicle operator" meant "any person who attempts to become validated." This disclosure in the specification "allows for a broad variety of devices to input the 'vehicle identification information'" and does not preclude the prior art reference's "key from being interpreted as an input device." The BPAI found that the Applicants had not demonstrated Examiner error with respect to the claims rejection, and therefore affirmed.

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