Wednesday, November 18, 2009

"User control for action X" covers automatic X (Ex parte Wood)

Ex parte Wood
Decided July 29, 2009
(Appeal 2009-002250, Appl. No. 10/077,062, Tech. Center 2600)

This case relates to steroscopic imaging. The claim limitation at issue is:
a single user control for adjusting the first and second distances of the stereoscopic image displayed by the display means, wherein at least the first distance of the stereoscopic image displayed on the display means is adjusted to correspond to a distance between eyes of a user.
The Examiner rejected under §102, with a reference teaching a stereoscopic imaging system with computer-controlled calibration that takes intraocular distance into account. The Examiner took the position that the computer is the claimed "user control" because the computer makes adjustments of the image distance based on the user. (Final Office Action, p. 2.)

The Applicant argued that the computer automatically adjusts images, and the system does not allow the user to make any distance adjustments. Therefore, the computer is not a "user control for adjusting" image distances.

In the Answer, the Examiner asserted an alternative form of the rejection, based on a different feature of the reference where a user moves a sheet with a target on it, the computer tracks the target and adjusts the image distance accordingly. "It is the user who moves the sheet, thus the user is controlling the apparatus." (The Examiner did not withdraw the original basis of the rejection, but added this as an alternative basis.)

The Board upheld the rejection, first noting that the Applicant's distinction between automatic and user control was irrelevant because "the words 'manual' or 'manually' do not appear in any of the claims." (Decision, pp. 9-10.) The Board then found that the claimed user control encompasses a user's manual movement of the sheet to calibrate or adjust the stereoscopic parameters.

The Board didn't stop there, but went on to make several additional findings about how other portions of the reference also taught the claimed "user control." The Board noted that the reference's system corrects for a different intraocular distance whenever a user of a different size (e.g., a child) steps in front of the reference's system. "Thus, the user's self-induced movement constitutes a form of user control or input." (Decision, p. 11.)

Finally, Board brought up several features not explicitly taught by the reference, but which would nonetheless be understood with by a POSITA, which read on user control of the stereoscopic distance parameters. "The common knowledge of the technologist [POSITA] would include the technical fact that a stereoscopic system such as that shown in Shapiro's Figure 7 would have an on/off button for user operation, or an on/off button for starting...the calibration routine."  (Decision, footnote 8, p. 10.) Thus, a button which initiates the computer-controlled calibration is a "user control for adjusting" the parameters as claimed because the user presses the button and the resulting calibration takes intraocular distance into account.

Like most BPAI decisions I read, this one makes me think about alternative ways to claim that avoid the Board's broad construction.

How do you claim user control of X in a way that avoids user-initiated computer control of X? That is, how do you avoid reading on the user pressing the button that initiates the computer-controlled calibration sequence that takes action X (here, adjusting the intraocular distance).

How do you claim user control of X in a way that avoids indirect user actions that affect X? Like the user moving in front of the system, which triggers the computer-controlled calibration sequence that takes action X?

One obvious answer to both of those questions is something like a "control for direct user adjustment of the first and second distances". Though if you tried making this amendment in prosecution, I can see getting a §112, First paragraph rejection. Ideally, you could think through all these possible broad constructions and capture the distinctions in the specification. When writing applications and drafting amendments, I used to spend all my time worrying about how my language can affect infringement. Now I realize that to get a patent, I need to spend time worrying about how my language can be broadly construed in ways I never considered to read on prior art that I hadn't even considered.

One final comment. I note that Board's comment that the claims don't specify manual or automatic seems to imply that the Examiner's first application of the rejection, using the computer-controlled calibration without the user-moved sheet, would also be upheld. This seems to read the adjective "user" out of "user control," unless you agree with the Examiner's position that "user" doesn't describe the entity doing the controlling, but instead describes the type of adjustments (i.e., "the computer makes adjustments of the image distance based on the user").

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