BPAI Rejects Claims, Finding PHOSITA Would Have to Make Speculative Assumptions Concerning the Meaning of Claim Language
Ex parte Brune (BPAI Aug. 7, 2009)
Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Macdonald, reversed a rejection of claims (and entered a new ground of rejection) relating to a method for data exchange between network devices.
While the examiner rejected the claims under 35 U.S.C. § 102(e), the BPAI first considered whether the claims at issue were definite. Two claim construction issues were involved, one related to steps in a method claim, and the other relating to construction of a means-plus function claim under 35 U.S.C. § 112 ¶ 6.
Before getting to the merits of the appeal, the BPAI noted that the PTO gives claims their "broadest reasonable interpretation" and the PTO is "not required in the course of prosecution to interpret claims in the same manner as courts are required to during infringement proceedings" as district court judges "operate under the assumption the patent is valid." Also, "[a] prior art [rejection] cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language."
First dealing with the method claim, the BPAI stated it was "unable to discern the steps" of the claim. The BPAI quote the following phrases from the claim: "wherein a device can be selected using a control device; "wherein a user interface for the selected device is generated based on description data which [is] stored;" and "wherein the user interface of a first device is displayed." (emphasis in opinion). The BPAI noted that "[a]n undisputable method claim has clauses that are designated by a present participate and separated with a comma (or a semicolon that includes a comma)." In view of the BPAI's "inability to identify the steps" of the claim, it found a "material issue of claim interpretation is present which must be resolved before the merits of the Examiner's and Appellants' position can be properly considered" and therefore rejected the claim as indefinite.
Next dealing with the means-plus-function claim, the claim at issue recited a "control means for generating a user interface display for enabling user control of first and second devices via said user interface display, the control means receiving description data associated with the first and second devices via said digital bus." The BPAI found that while "generating a user interface display" was the function associated with the "control means" of the claim, the specification did "not describe, with particularity, sufficient structure, material, or acts for performing the 'generating' limitation" of the claim. This default would cause a PHOSITA "to make speculative assumptions concerning the meaning of the claim language" and the BPAI therefore rejected this claim as indefinite as well.
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