Sunday, November 15, 2009

"Button" includes software and hardware implementations (Ex parte Ngueyn)

Ex parte Nguyen
Decided September 21, 2009
(Appeal 2009-007175; Appl. 10/696,610; Tech. Center 2100)

The claim at issue was directed to "a pen-based computer system", and the element at issue was "a single button for controlling said means for operating to allow a user to select said write mode or said pan mode".

The Examiner took the position that an on-screen icon, which the user activated by touching the icon with the pen, read on the claimed button. The Examiner further explained that "one skilled in the art recognizes controls, GUI elements, buttons are all under the same category of visual cues to the user that perform a function when activated." (Answer, pp. 3-4.)

The Applicant argued that "a manually actuated button and a screen pen touch icon selection element are simply not the same." (Brief, p. 8.) The Examiner responded that the specification describes hardware and software, but the claim language makes no distinction between the two and so it is not clear whether the claimed button is physical or is a part of the user interface. (Answer, pp. 8-9.)

The Board agreed found that the reference's icon read on the element at issue:
Further, claim 1 does not limit its “button” to a hardware-type button as Appellant argues. Rather, claim 1 merely recites “a single button” that allows a user to “select said write mode or said pan mode.” Thus, we interpret the “button” of claim 1 as including both hardware-type and screen icon-type buttons.
(Decison, pp. 7-8, citations omitted.)
The claim construction standard used by the Board is "broadest reasonable", so I wasn't surprised at all to see the Board's construction of "button". I think that a person familiar with computers would understand "button," when used in a claim to a pen-based computer, to encompass both a physical button and a on-screen button implemented in software. Such a person wouldn't feel the need to consult the spec, since button is a familiar term.

However, I reviewed the spec, and the claimed mode selection button is described only as a physical button. And as described by In Re Bond, the standard is the "broadest reasonable interpretation consistent with the specification". Therefore, it seems to me that the Board's construction is incorrect.

The decision did not include any Findings of Fact about the Applicant's spec, so perhaps the Board did not review the spec, but instead relied on the Examiner's characterization of it. As noted above, the Examiner's claim construction discussion characterized the spec as describing "hardware and software." This statement seems to imply that the button was described as being either, even though the spec contained no mention of a software-implemented on-screen button.


  1. It seems to be that it is not inconsistent with the spec to interpret the term buttom as including a software-implemented button just because the spec only discloses a physical button. Patent can often include non-disclosed embodiments with the scope of the claims.

  2. Sure, claim construction law says not to import features from a preferred embodiment into the claims. But here, the physical button wasn't the preferred embodiment, it was the only embodiment -- I didn't even see any broadening language.

    This is one of those cases where the embodiment captured by the broad claim construction would almost certain be invalid under 112 First written description. Because the spec, as I read it, didn't show that inventors possessed anything other than the physical button.