Ex parte Moon

Informative decision only: persuasive authority, not binding precedent. When an examiner construes a claim limitation in a way that is inconsistent with the specification (here, drawings showing a heat dissipater not coupled to an entire portion of each of two substrate surfaces), the Board will not adopt that construction, because during examination claims receive their broadest reasonable interpretation consistent with the specification. A reference that fails the properly construed limitation cannot support the rejection, and the rejections relying on it are reversed. No prior precedent directly addressed this issue in the text; the Board simply applied In re Am. Acad. of Sci. Tech. Ctr. to the claim at hand. For the examiner, the decision shows that a broadest-reasonable-interpretation reading that reads on the prior art will fail if the specification and drawings point to a narrower meaning. For the applicant, it shows that the originally filed figures and the specification paragraphs describing them can fix the claim scope and defeat an obviousness rejection. The Board relied on In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), for the construction standard, and on In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970), for the point that a reference must be positively included in the statement of the rejection. LEGAL TEST OR STANDARD: During examination, "claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." The Board gave the disputed feature that interpretation and then asked whether the reference taught it. TRIGGERING FACTS: Claims 1 and 19 of a multi-chip package application recited that the heat dissipater is not mechanically coupled to an entire portion of the first and second surfaces. The examiner read the claim as barring only coupling of the entire surface of both surfaces at once, so that Kunii, with one surface wholly coupled and the other partly coupled, would meet it. The originally filed Figures 3, 4 and 5 show a dissipater not coupled to an entire portion of either surface. Kunii had one surface entirely coupled, and the examiner pointed to nothing in Schulman on the feature. KEY QUOTE: "We disagree because the Examiner's claim construction is inconsistent with the Specification as discussed above." (p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), on claim construction, and cited In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970), on a reference not positively included in the rejection. PRACTICE TIP: In an appeal brief, tie the proposed claim construction to specific specification paragraphs and the original drawings, and show that the examiner's broader reading contradicts them. Also check that each reference the examiner relies on is positively included in the statement of rejection.