Sunday, September 20, 2009

BPAI finds intermediate step is still "responsive to" (Ex parte Goodwin: )

Ex parte Goodwin
Decided February 10, 2009
(Appeal 2009-0786; Appl. No. 09/727,290; Tech. Center 2600)

This is another BPAI decision involving the interpretation of "in response to." (See this post for a discussion of another BPAI decision also involving "in response to.")

The claim in this case read:
a) sensing a person within a predetermined distance of the kiosk by a proximity sensor of the kiosk;
b) displaying first information in response to said sensing step by a display of the kiosk to attract attention of the person to the first information of the display...;

The prior art taught a kiosk with a proximity sensor. When a person was detected, the prior art then determined whether or not the screen had been touched. If the screen was touched, the kiosk interacted with the user based on the particular area that was touched. If the screen was not touched, the kiosk provided an attention getting display.

Thus, the prior art disclosed "displaying first information" (the attention getting display) in response to two conditions being met: a person was sensed; and the screen was not touched. The claim included a single condition – person was sensed – for the display step.

Since the claim used the open-ended transitional phrase "comprising," the Board found that
[T]he claim does not preclude intermediary steps occurring between sensing a person and displaying the first information...Thus even though Cragun shows the step of determining whether the touch screen has been touched (step 112) occurs immediately prior to displaying the first information at 114, Cragun still discloses displaying "first information" (step 114) in response to sensing a person within a predetermined distance of kiosk 10 (FF3).
(Decision, pp. 5-6.)
I disagree with the analysis here. I can't argue with the black letter law about the meaning of "comprising," and my problem is not with the presence of the intermediate step (testing for a touch to the screen) per se. My problem is that the attention-getting display in Cragun is conditional on sensing and touching, where I read the claim as having a single condition (sensing).

Here's another way to think about the issue: should the default interpretation of  "action X responsive to condition Y" be
  • if condition Y is met, action X always occurs; or
  • if condition Y is met, action X may occur, but some other conditions may be required also.
I feel strongly that the first interpretation is right: that "responsive to" implies "always". But is there a better way to draft the claim to more clearly express the intention? Maybe "action X responsive only to condition Y"?


  1. I would not argue that the first interpretation is correct because it would create a design-around opportunity for a competitor, who would merely add an additional condition to avoid infringement.

  2. Agreed that arguing or amending action-always-occurs-when-condition-is-met allows for design arounds. In fact, the Cragun reference in this case would be such a design-around, since the displaying occurs only when an additional condition is met (touching the screen).

    I'm okay with a design around like Cragun, because it seems to be a big difference in functionality. What you don't want is a trivial design around. In this case, I think that's a difference that doesn't affect user functionality. I can't think of a trivial design-around for this claim.

    I'd prefer an amendment or argument that excludes Cragun but includes trivial design arounds. But if I can't think of one, I'd still argue or amend to say action-always-occurs-when-condition-is-met.

  3. All my comments assume the responsive-to limitation is an inventive feature (or at least part of the inventive feature).

    My philosophy is that narrowing amendments related to the inventive feature are better than amendments not related to the inventive feature. My reasoning: even if the unrelated feature is itself separately inventive, the probability of an infringer practicing two unrelated features is greatly reduced. Right?

  4. In response to your amendment suggestion ("Maybe "action X responsive ONLY to condition Y,") - I think it may be a little unnecessarily restrictive. Instead, I would suggest: "Irrespective of an action performed by said person,displaying first information in response to said sensing step..." (or "Regardless of an action...") This way the amended claim provides somewhat wider coverage in that it does not preclude trigger events unrelated to the person (while allowing for additional dependent claims as well). Non-person trigger events may include: sensing light levels around the kiosk, obtaining data mining results, customizing display to specific person (e.g., gender) etc.

  5. >I would suggest: "Irrespective of an action
    >performed by said person,displaying first
    >information in response to said sensing
    >step..." (or "Regardless of an action...")
    I like it.

    I think this limitation would probably be available only if you considered this distinction (user actions vs. non-user actions) when you drafted the app. I feel certain you'd get a 112 1st if you tried to make this amendment in prosecution without strong support in the spec.

    Your distinction is definitely something to think about when drafting apps.