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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Monday
Nov152010

BPAI Finds Examiner Rendered Claim Term Superfluous During Prosecution

Ex parte Castillo (BPAI Nov. 15, 2010)

Today, the BPAI reversed an examiner's rejection of claims as the examiner's interpretation of the claim rendered the claim term "directly" superfluous.  The patent application at issue relates to a pocket door cabinet having a door hingedly coupled to a slidable structure so that the door is translatable with the slidable structure.

One independent claim of the patent application requires "a slidable structure directly attached by a bracket to at least one of the top wall or bottom wall."  During prosecution, the examiner rejected this claim as anticipated by a prior art reference that disclosed slides attached to an inner wall by a frame member with the inner wall being attached to at least one of a top wall or a bottom wall.  The BPAI found that "the Examiner's interpretation of 'a slidable structure directly attached by a bracket to at least one of the top wall or bottom wall' as covering a slidable structure that is attached by a bracket to a bottom wall via a false wall in effect renders meaningless, or superfluous, the term 'directly.'"  The BPAI found that the slides of the prior art reference are not directly attached to the bottom wall by the frame member, and therefore reversed the examiner's rejection of that claim.