BPAI cares about adjective placement in a claim (Ex parte Buckley)

Ex parte Buckley
Decided March 10, 2009
(Appeal 2007-3617, Appl. No. 09/941,329, Tech. Center 2100)

When drafting a claim, every word matters – and the placement of those words is important too. This point was underscored by the Board of Patent Appeals and Interferences in Ex Parte Buckley. The claim limitation at issue was “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle or a signal device transmitter.”

The Examiner interpreted this claim limitation as requiring access to both layers without an additional hardware dongle, and without a signal device transmitter. (Answer, p. 4.) Using this interpretation, the Examiner rejected the claim under §112 ¶1 because remote access would be impossible without the use of a signal device transmitter. (Answer, p. 4.) The Applicant argued that the limitation should instead be construed as “both layers can be accessed without an additional hardware dongle and without an additional signal device transmitter,” which was described in the specification. (Brief, p. 8, emphasis added.)

The Board agreed with the Examiner’s claim construction: as a matter of English grammar, “additional” modifies “hardware dongle” but not “signal device transmitter.” (Decision, pp. 5-6.) Although the grammar rule cited by the Board didn’t seem on point to me, the Board appeared to reach its conclusion because the article “a” in front of “signal device transmitter” separates the adjective “additional” from “signal device transmitter." (Decision, p. 5.)

Although I agree with the Board's claim construction, I also see this as a good example of how claim syntax is different than ordinary English usage. In normal writing, a single instance of “additional” is understood as modifying both noun phrases: “Both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle or signal device transmitter.” This works because in normal writing, there is no article in front of “signal device transmitter.” Yet when drafting a claim, we’re compelled to use the extra article “a”, and doing so changes how the modifier “additional” is applied.

The Applicant could have overcome the §112 ¶1 rejection by repeating the adjective “additional” in front of “signal device transmitter.” In fact, the Applicant filed an RCE after appeal and amended the claims to do just that.