Monday, November 23, 2009

"Substantially no software" doesn't exclude software (Ex parte Avizienis)

Ex parte Avizienis
Decided October 29, 2009
(Appeal 2009-003592; Appl. No. 09/886,959; Tech. Center 2100)

I posted about this case earlier (here) to discuss 112, fourth paragraph. In this post, I'll discuss the claim construction of the element "a hardware network of components, having substantially no software".

In the Brief, the Applicant took the position that the primary reference did not disclose this element, because the "cited circuits [in the primary reference] are operated by associated software, most prominently avionics software." (Brief, p. 20.)  Before filing the Brief, the Applicant also filed an expert affidavit under 1.132 making this same point. The Examiner did not make a specific allegation about how the reference taught the "substantially no software" limitation, instead only stating that "Figures 3, 4, and 5 disclose a hardware network of fault detection and handling components." (Answer, p. 5.) 

The Board found that "having substantially no software" did not distinguish over the primary reference, construing the term as follows:
We note that the Court of Appeals for the Federal Circuit has repeated reaffirmed that the term "substantial" implies "approximate." See note 6 supra. Thus, we broadly but reasonably construe Appellant's claim 1 as not precluding the use of software programs that may be held in a ROM or any other medium or firmware.
(Decision, p. 16.)
My reaction to this: the Board appears to have read "substantially" out of the claim! If "substantially no software" does not preclude the use of software, what effect does the adjective "substantially" have?

I wouldn't take issue with this if the Board analyzed the reference to find that "the reference is 95% hardware and 5% software", and then concluded that such a makeup qualifies as "substantially no software." I also wouldn't take issue with this if the Board found that "substantially" was indefinite when measuring to software vs. hardware. They could punt by saying: "We can interpret phrases like 'substantially parallel' and even 'substantially simultaneously' but we simply don't know what 'substantially no software' actually means." Instead, the Board seems to have jumped to a conclusion without a good explanation.

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