Ex Parte Wu et al - Page 4

               Appeal 2007-0936                                                                             
               Application 10/455,507                                                                       
               no mention in Imamura of the trapezoidal area (i.e., the area of “access arm                 
               2”), or any equivalent as having spring-like capabilities (Br. 6).                           
                      The Examiner disagrees.  The Examiner argues that the Webster’s                       
               Dictionary definition of the word “spring” supports the rejection (i.e., where               
               the dictionary definition of “spring” broadly corresponds to “elasticity” or                 
               “resilience”).  The Examiner argues that Imamura’s trapezoidal-hole region                   
               inherently exhibits the property of “resilience” and thus has spring-like                    
               capabilities. The Examiner notes that the amount of resilience contained in                  
               the claimed “spring region” is not defined in the Specification nor depicted                 
               in the instant drawings.  Therefore, the Examiner concludes that the                         
               language of the claim broadly encompasses Imamura’s trapezoidal-hole area                    
               when the recited “spring region” is properly construed in light of the                       
               Specification (Answer 6).                                                                    
                      In the Reply Brief, Appellants argue that the dictionary definition of                
               the term “spring” is not relevant to the instant invention.  Instead, Appellants             
               note that the claims expressly recite a “spring region,” as described in                     
               embodiments of the instant invention.  Appellants specifically disagree with                 
               the Examiner’s assertion that any material with properties of resilience is the              
               equivalent of a “spring region,” as claimed.  Instead, Appellants submit that                
               the term “spring region” is “easily understood by one of ordinary skill in the               
               art, and therefore requires no further clarification” (Reply Br. 2-3).                       

                                               ANALYSIS                                                     
                      We begin our analysis by construing the claim term “spring region”                    
               by applying the broadest reasonable interpretation consistent with the                       
               Specification.  See In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,                        

                                                     4                                                      

Page:  Previous  1  2  3  4  5  6  7  8  Next

Last modified: September 9, 2013