The Broadest Reasonable Interpretation is often in contention during prosecution. But as we have discussed in past posts (here), the proper broadest interpretation is one that is in light of, and consistent with, the specification. Both examiners and applicants sometimes forget to actually check how the specification uses disputed terms, but on appeal, this will often be the first thing PTAB judges check. 3M learned this first-hand in application no. 14/761,751, which relates to graphic films.
Specifically, the application describes graphic films for applying designs to windows, buildings, pavements, or vehicles, such as for advertising or decoration. The specification describes overcoming issues with conventional films that utilize polyvinyl chloride (“PVC”) by using polyolefin films and thus avoiding halogens. However, polyolefin films can be difficult to image and may degrade in weather. As such, claim 26 on appeal allegedly provides an improvement:
A graphic film article comprising: a conformable, extruded film layer comprising a polymer blend comprising a thermoplastic polyurethane and a polyvinyl butyral, wherein the film layer is outdoor weatherable, the film has a first major surface and a second major surface opposite the first major surface, and at least one major surface is an imageable film surface that can receive an ink layer.
For claim 26, 3M argued that the primary reference disclosed a multilayer construction with only its core layer including thermoplastic polyurethane combined with polyvinyl butyral. Essentially, 3M relied on the claimed element of an “extruded film layer” excluding the cited reference because it was mult-layered and as such did not have the features of claim 26 in a single layer. The examiner responded that the applicant utilized open-ended language (e.g., comprising) and thus the rejection was appropriate. Thus, while not clearly articulated by the examiner, an issue here was the broadest reasonable interpretation of the extruded layer of claim 26 - if the proper construction could encompass multiple layers, then the examiner's position was supported by the evidence.
The PTAB had to look no further than the applicant’s own specification, which described an embodiment “wherein the film layer is multiple layers.” From this, it was easy for the Board to conclude that 3M’s own specification “supports the Examiner’s interpretation of ‘film layer’ as encompassing multilayer constructions.”
It is difficult for an applicant to argue against an interpretation when their own specification gives the very definition used by the examiner. While an examiner (and their two conferees) may not check the specification’s use of a term, PTAB judges can and will. So, be careful in your BRI arguments and double check your specification.