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What “substantially” means July 29, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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Sometimes in the course of prosecution, either the applicant or the Examiner will proffer an argument about a claim term that is manifestly absurd. This was certainly the case in Ex parte Brosske. I am not even going to try to make the German “SS” letter or the umlaut on WordPress, so my apologies to him if he ever reads this.

One of the claims in Ex parte Brosske required that a blank be “substantially flat.”  The Examiner cited prior art that showed a blank having a 90 degree angle in it, and argued: “MPEP 2173.05 (b) states that the term ‘substantially’ is a broad term; therefore, the phrase ‘substantially flat’ is considered to include a blank that is not completely in a horizontal or vertical orientation. That is, a curve or bend in the blank still meets the claimed limitation.”

Fortunately, the PTAB applied common sense, and held that “a blank bent at a 90 degree angle does not constitute a “substantially” flat blank.”  I am a little surprised that the PTAB did not make note of the fact that the Examiner’s interpretation read the term “substantially” completely out of the claim.  I would be hard pressed to think of anything that wouldn’t be “substantially flat” if something bent at a 90 degree angle is considered “substantially flat.”

 

 

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