Decided March 10, 2009
(Appeal 2007-3617, Appl. No. 09/941,329, Tech. Center 2100)
I blogged about Ex Parte Buckley earlier (here), discussing a §112 rejection that really turned out to be a claim construction issue: whether “additional” modified one noun phrase, or two. It turns out there was another claim construction issue lurking in this case, one which didn’t get much discussion: when the claim recites “A or B,” is B optional?
The simplistic answer is “The claim uses the alternative so B is optional." But does the word “or” always mean in the alternative? I say No, not always — as usual, it depends on *exactly* what the claim says.
Here's claim limitation at issue: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle or a signal device transmitter.”
The Board agreed with the Examiner that “under the broadest reasonable interpretation of the claim the ‘hardware dongle’ may be read as optional.” (Decision, p. 9.) The Examiner laid out his argument in the Answer:
Additionally, as an alternate argument, Applicant's entire argument is moot in view of the fact that that the limitation requiring access without "an additional hardware dongle" is not even required by the claim when the alternative OR limitation requiring access without an additional signal device transmitter is utilized. Examiner again notes that evaluating this claim in view of the OR conjunction for the purposes of determining patentability requires the claim to be interpreted two ways, 1) wherein both the hardware and software layer can be accessed without the requirement for an additional hardware dongle OR 2) wherein both the hardware and software layer can be accessed without the requirement for an additional signal device transmitter.Note the Examiner’s conclusion that the use of “or” signals an alternative. In this case, I say the Examiner is wrong: the negative phrase “without” effectively changes the alternative to a combination. I think the correct claim construction is “both the hardware and software layer can be accessed without the requirement for an additional hardware dongle AND without the requirement for a signal device transmitter.”
(Examiner’s Answer, p. 38, emphasis in original.)
To make this point clearer, consider this simpler example: “turning the vehicle without stopping or slowing.” Okay, my example limitation used the word “or” — but surely no one would say that stopping and slowing are alternatives? I think it’s clear that the claim actually requires two things: turning without stopping; and turning without slowing.
I was disappointed to see that the Board agreed with the Examiner on this, though it would have helped if the Applicant filed a Reply Brief to address the point. As a practical matter, it’s probably wiser to amend during prosecution rather than trying to convince the Examiner that “or” doesn’t always mean “in the alternative.” In this case, I would amend to: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle and without the requirement for a signal device transmitter.” Or maybe “wherein each of the hardware and the software layer” — because someone might interpret "both" as requiring simultaneous access?