Ex parte Frenk

Informative decision only: persuasive authority, not binding precedent. When a claim term of approximation such as "substantially equal" is construed under the broadest reasonable interpretation, the Board will not accept an examiner's reading that sets no limit on what counts as substantially equal; here the term was read, in light of the Specification's "the same" and the dictionary meaning "essentially," as within manufacturing tolerances. An anticipation finding that rests solely on a prior art drawing, where the reference's specification is silent on the dimension, cannot establish that the claimed relationship (equal pitches) is met. No prior precedent directly addressed this issue in the text; the Board applied existing authority on claim construction and patent drawings. For an examiner (the party asserting unpatentability), the decision means a "substantially" limitation cannot be treated as boundless, and a bare reading of a reference's figure will not show a dimensional relationship without textual support. For an applicant or appellant, it supports arguing that the specification and a dictionary definition give an approximation term a concrete bound, and that drawings not described as to scale cannot prove a claimed proportion. The Board relied on In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (broadest reasonable interpretation), Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006), Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001), Hockerson-Halbertstadt, Inc. v. Avia Group Int'l Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), and In re Olson, 212 F.2d 590, 592 (CCPA 1954). LEGAL TEST OR STANDARD: Claims receive their broadest reasonable interpretation consistent with the Specification as one of ordinary skill would interpret it, but claim language should not be treated as meaningless. To anticipate, every element and limitation must be found in a single prior art reference, arranged as in the claim. Patent drawings do not define precise proportions and may not be relied on to show particular sizes if the specification is completely silent on the issue. TRIGGERING FACTS: Claim 1 of a bone screw application required first and second threaded portions whose pitches are "substantially equal." The Specification said the pitches are "the same." The Examiner rejected under 35 U.S.C. 102(b) relying solely on Figure 2 of Kim, with no other Kim disclosure on pitch, and said "substantially" is broad so the prior art need not disclose precisely equal threads. Appellants argued Kim's drawings were not described as to scale. KEY QUOTE: "Given the teachings of the Specification, as well as the dictionary definition of "substantially" as "essentially," we agree with Appellants' interpretation of "substantially the same" as being within manufacturing tolerances." (p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Hockerson-Halbertstadt, Inc. v. Avia Group Int'l Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) and In re Olson, 212 F.2d 590, 592 (CCPA 1954) on drawings, and Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006) on not treating claim language as meaningless. PRACTICE TIP: When an examiner relies only on a prior art figure to meet a "substantially" dimensional limitation, argue in the appeal brief that the reference's text is silent and its drawings are not described as to scale, and anchor a bounded construction of "substantially" in the specification's language and a dictionary definition.