17 August 2010

Two Opinions of the US Board of Appeals (BPAI) on "Broadest Reasonable Interpretation"

(Hermes, messenger of the Gods)
Only recently, the USPTO has published the BPAI decision ex parte Givens as an informative opinion on the importend question as to how broad patent claims may be interpreted by USPTO examiners.

As summarised on Peter Zura's 271 Patent Blog, an application relating to a "method and apparatus for reducing noise associated with acoustic sensor outputs" has been rejected during examination due to alledged lack of novelty over a prior art reference pursuant 35 U.S.C § 102(e). While the rejected claim comprised a "sub-band spectral subtractive routine", the Examiner argued that, since the application did "not provide a specific definition of 'sub-band spectral subtractive routine', thus, giving the term its broadest reasonable interpretation, the term can include any adaptive filter".

The Board of Appeal (BPAI) found that this is a rather liberal application of the demanded 'broadest reasonable interpretation', and argued:
Although Appellant’s Specification does not specifically define the term “sub-band spectral subtractive routine,” this is a specific claim term for a specific type of filtering (Spec. ¶[0032]). Any interpretation that fails to give weight to “sub-band,” “spectral,” “subtractive,” and “routine” deprives the words in this claim term of their normal meaning.
Thus, the term “sub-band spectral subtractive routine” does not include just any adaptive filter, but rather refers to a specific filtering. In fact the prior art circuit is fed to a summer and not to a sub-band spectral subtractive routine and the reference does not describe the summer as operating on a sub-band. The reference thus did not disclose each and every element of the invention.

Another interesting BPAI opinion on claims interpretation, this time relating to software, is ex parte Peyrelevade issued 17 March 2010, in which the BPAI found that, prima facie, the claims are novel and non-obvious, but certain claims were rejected as being directed to non-statutory subject matter.

The relevant claims recited a "computer program product" that includes code. Under the doctrine of "broadest reasonable interpretation", the BPAI found that the claims
encompass [] a computer program per se [and] also encompass [] the computer program product being embodied on a carrier wave [since the claims recited] the open transitional phrase 'comprising and do [] not preclude the computer program product from being embodied in a carrier wave.  
As reported on Justin Gray's Gray on Claims blog, the BPAI found that the claims encompassed both a computer program per se as well as a signal, and were therefore directed to non-statutory subject matter.

In Greek mythology, Hermes, from whose name the term "hermeneutics" is said to be derived, is the inventor of language and speech, an interpreter and a liar. As messenger and translator of the Gods he was especially experienced in interpreting the Delphic Oracle, through which the Gods spoke to men. As an European Patent Attorney, I must confess that the US patent law as practised by the USPTO sometimes appears as an oracle to me, which is why I am glad that the BPAI is experienced in interpreting those spells such that they better match with what one may call a common sense of patent practise.