Examining patent claims is a difficult job requiring an unnatural ability to consider abstracted features beyond the embodiments described in an application. The difficult only multiplies when complex science and technology are involved. Patent examiners must master this skill, but also master how far of an abstraction is reasonable. To illustrate this not so simple struggle, a recent case before the PTAB is helpful. The invention relates to an electrode assembly for use in an electrosurgery pencil. Claim 1 on appeal is reproduced below (Appeal 2023-002089 Application 14/698,403):

1. An electrode assembly for use in an electrosurgery pencil comprising:
an electrode blade having a generally scalpel shape with a planar top and an opposite sharp bottom that includes a side cutting edge located opposite an end of the electrode blade that is connectable to an energy source; and
a non-conductive housing having an opening therethrough positioned near the planar top of said electrode blade wherein a total length of the non-conductive housing is positioned adjacent to and on the planar top of the electrode blade such that the total length of the non-conductive housing is touching the electrode blade and at least a portion of the planar top of the electrode blade extends beyond the non-conductive housing near the side cutting edge of the electrode blade.

At issues was whether the prior art cited by the examiner disclosed the planar top. At first glance this seems a simple issue. Those not familiar with patent prosecution might hear this an think that patent professionals are rather slow if this is what causes difficulty. But looking deeper, there are differences between the meaning of, for example, a three-dimensional portion labeled a top, of which there is some surface that is planar, and, an uppermost surface that is planar. That is exactly the issue that was present in this case - the examiner taking the former interpretation so as to read the claimed element onto the prior art, and the applicant arguing the latter.

Asking an AI tool to draw a “planar top” provided this (which of course was nothing like either the invention or the prior art):

To decide the issue, the PTAB considered the proper broad, yet reasonable, interpretation in light of the specification (citations omitted).

We do not agree with the Examiner that a reasonable construction of the term “planar” encompasses a “3-dimensional structure” formed by multiple planar surfaces/sides. It is well established that claims are construed with an eye toward giving effect to all terms in the claim. Here, the Examiner’s construction of the phrase “planar top” as encompassing a three-dimensional structure, in effect renders meaningless, or superfluous, the phrase “planar,” which denotes a structure or element “lying in a plane,” that is, a “surface.” We agree with Appellant that “[a]n element recited . . . as a planar element cannot be deemed to be a three-dimensional structure or element.”

Remember to consider the counterpoints to your interpretation before digging in your heels - whether you are the applicant or the examiner. Slight variations in the phraseology of terms can make a significant impact on the proper interpretation.