BPAI Reverses Rejection Based On 75-Year-Old Reference and Broad Dictionary Definition of "Strap"

Ex parte Smith (BPAI Jul. 23, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Horner, reversed a rejection of claims relating to a binding apparatus for holding sheet materials in an notebook.

The examiner's claim rejections focused on a roughly 75-year-old reference combined with a dictionary definition of the term "strap" as found in the claim term "at least one strap interconnected to at least one of said left edge and said right edge of said spine." The dictionary definition of the term "strap" that the examiner used (among a number of definitions in the referenced dictionary) defined the term as "tang, post or rod." The examiner found that the 75-year-old reference disclosed a "post."

While during prosecution terms are given their "broadest reasonable meaning" this meaning is given in light of the specification. The BPAI found that the dictionary definition used by the examiner was not consistent with the ordinary meaning of the term "strap" that a person having ordinary skill in the art would have gleaned from reading the specification. The specification disclosed two embodiments. In each embodiment, the strap was curled or resiliently deflected around a portion of the sheets. The BPAI found that the when the claims are read in light of the specification, "the term 'strap' is used to define an element that can wrap around a portion of the sheets, thereby strapping them in place." This construction was consistent with other definitions of the term "strap" found in the dictionary cited by the examiner. Since there was nothing to indicate that the 75-year-old reference's "posts" were capable of being curled to wrap around the sheets and strap them into place, the BPAI reversed the examiner's rejection of these claims.

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