Monday, September 14, 2009

BPAI says "in response to" means "after" (Ex parte Golovinsky)

Ex parte Golovinsky 
Decided September 1, 2009
(Appeal 2009-00908, Appl. No. 10/152,947, Tech. Center 2400)

At issue in this case was the meaning of the phrase "in response to." The claim used the form "action X in response to action Y." The Board interpreted "in response to" to mean "after" or "following." The Board basically adopted the reasoning explained in the Examiner's Answer:
When the CIMOM server (70) receives a request for dynamic information it "determines which object provider or providers to contact . . . [by] locating the appropriate provider or providers which can satisfy the request" and "combines the dynamic information with the static information now in the form of CIMOM classes to produce some desired instance output"...Thus, it is clear that the CIMOM server (70) cannot process the requests unless the information has already been read. As such, it seems perfectly reasonable (and consistent with the specification) to say that the CIMOM server (70) processes requests and locates the dynamic information "in response to" reading the MIB definition.
(Examiner's Answer, p. 5, emphasis added.)
The Appellant made the same argument that I would have: the plain meaning of "X in response to Y" requires that action Y in some way causes action X. The Board claimed to be applying the "broadest reasonable construction" standard – but surely ignoring the implied causal relationship crosses the line into unreasonableness!

I find this decision very disturbing, as I use the "in response to" construction in many of my claims.

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