Monday, February 22, 2010

A mobile phone is a PDA is a calculator (Ex parte Joachim)

Can you say that a phone that contains a calculator function *is* a calculator? Ex parte Joachim seems to say that, which brings up a whole host of issues in my mind.


Ex parte Joachim
(Appeal 2008-004979; Serial No. 10/412,810; Tech. Center 2100)
Decided: December 10, 2009

This application is about calculators. Here's one of the calculator embodiments:
Here's one of the claims on appeal:
11. A calculator which comprises:
a housing comprising a base and a carabiner clip assembly unitary with the base;
the base having an exterior surface;
a keypad data input component on a portion of the exterior surface of the base capable of inputting numeric data and numeric calculation function commands into a microprocessor; and
a data display on a portion of the exterior surface of the base for displaying data from said microprocessor.
The Examiner's anticipatory reference wasn't an actual calculator. Instead, it described various electronic devices, such as mobile phones, PDAs, and portable computers. The Examiner asserted two reasons for reading these devices as "calculators."

One, "[t]he definition of computer is to perform calculations and the definition of a computer is any device capable of processing information to produce a desired result". [My two cents: That's not the broadest reasonable interpretation in view of the specification — it's a ridiculous interpretation.]

Two, the reference taught that the mobile phone may also "function as a personal digital assistance or similar computing device". Therefore, the Examiner reasoned: the mobile phone is a "computing device capable of complex calculations"; a calculator is a subset of a computer; and the mobile phone is a calculator.

The Board summarily agreed with the Examiner's reasoning and conclusion. I don't disagree strongly with the result, but something about the reasoning bothers me.

For one thing, it's not clear what the Examiner was doing with the PDA. The premises "mobile phone is a computer" and "calculator is a subset of a computer" do not lead to the conclusion "mobile phone is a calculator".

If the Examiner was trying to say that the mobile phone includes a calculator function ... well, then, show that. Make a §103 rejection, using the anticipatory reference (which presumably taught the housing and carabiner) together with a secondary reference that showed a phone with a calculator function.

Note that my improved rejection still relies on "a phone that contains a calculator function *is* a calculator." I'm not sure I agree. [Anyone else want to comment?]

This application was assigned to Tech. Center 2100. I deal almost exclusively with those Art Units, where practitioners and Examiners are used to everything being described in functional terms: a calculator is something that calculates. I wonder if this kind of mindset affected both the Examiner and the Board.

Would this sort of rejection be found in a mechanical art unit? I see this treatment of claim language and references as a stark contrast to the Ex parte Jenkins fishing equipment case which I recently posted about (here). In Jenkins, the Board bent over backwards to read the claim term "storage space" in the context of fishing equipment and the result was that the storage space was interpreted to be bigger than a rivet. Yet in Joachim the Board did nothing to interpret "calculator" in the context of the application, which was all about a calculator, not a computer – as those terms are ordinarily interpreted.

11 comments:

  1. Karen, I disagree with you on this one. Note that the term "calculator" appears only in the preamble, and, as far as I can tell, doesn't inform the rest of the claim other than suggesting that the context is a portable electronic apparatus. So "calculator" is not a limiting term, is it? It seems to me that all it does, even when properly read in the context of the specification, is to place us in the general context of a portable electronic device.

    The only part of the body of the claim that relates to the "calculator" function is the "keypad data input component." But the limiting description of that, "capable of inputting numeric data and numeric calculation function commands," is pretty weak. The claim doesn't even say that the keys are ACTUALLY configured for numeric input and mathematical function selection, it simply says that the keypad component is capable of it. I think it's difficult to argue that the keypad on my mobile phone is incapable of inputting numbers and function selections, even if the phone is not yet programmed with a calculator application.

    ReplyDelete
  2. There's plenty of room for disagreement on this blog! But I'm not sure we really disagree, because I think we're talking about different things :)

    You say the reference anticipates because the preamble "calculator" shouldn't be given patentable weight.

    I didn't say anything about this issue -- though it's an obvious part of a real analysis, so maybe I should have.

    I didn't bring it up because the Board didn't. Instead, the Board went on for pages about why the reference *did* teach a calculator.

    If the Board performed the straightforward analysis that you did, and simply said "calculator not given patentable weight, reference teaches the structural and functional limitations" -- well, I probably wouldn't have blogged about the case.

    ReplyDelete
  3. Leopold, thanks for bringing up the two "elephant in the room" issues that I didn't mention: non-limiting preamble and capable-of.

    These are good reasons why the Applicant probably would have lost even if the "PDA is a calculator" issue had gone the other way. Wonder why the Board didn't decide on those easy grounds.

    ReplyDelete
  4. The reference, as you describe it, plainly discloses a calculator. The end. The board need say no more.

    ReplyDelete
  5. "I didn't bring it up because the Board didn't."

    See, that's what you get for actually reading the case before commenting on it! :)

    You're right - we don't disagree. Having read the case now, I think the Board's analysis is a bit of a stretch. This is one of those cases where a bad claim makes bad law. In view of the reference, it's clear (to me, at least) that there's nothing new here. But it sure would be nice if the Board could avoid relying on handstands to reject the claim, especially when there is a clearer approach available.

    ReplyDelete
  6. >The reference, as you describe it, plainly
    >discloses a calculator.

    Really? An actual calculator?

    What I said about the reference - paraphrasing and summarizing from the Board decision - is
    that it taught "electronic devices, such as mobile phones, PDAs, and portable computers."

    You're telling me that a mobile phone IS a calculator? Inherently? Gotta disagree.

    Those aren't calculators. Yes, that many electronic devices include software that provides calculator functions -- e.g. calc.exe. But that's *not* what the Board based it's decision on.

    Lest you chastise me for arguing technicalities or acting like a lawyer ... well, yes, I am a lawyer and I do argue the facts on the record. I'm sure that infuriates some folks, but that's my role.

    Under the facts presented by the Board, I just don't see that the reference disclosed a calculator.

    ReplyDelete
  7. "You're telling me that a mobile phone IS a calculator? Inherently? Gotta disagree. "

    What does a mobile phone have to do with a PDA/portable computer? Nothing.

    Furthermore, why would a calculator have to provide a calculator function to a user to be a calculator? Stop thinking in retar ded functional terms and start thinking about what a machine IS. Please, show me a (portable or stationary) computer that is not a calculator. I have yet to see one. I've seen plenty that offer no calculator function to the user, but I've seen none that aren't, inside, a calculator. Nor have I even heard a rumor about such a thing. In fact it seems rather impossible to have a computer at all without the machine being able to calculate.

    ReplyDelete
  8. >What does a mobile phone have to do with a >PDA/portable computer?

    All three are devices mentioned in the reference and which the Examiner referred to for teaching a calculator.

    I'll stick with the PDA, and say the same thing: a PDA is not *inherently* a calculator, as that term is understood by a POSITA.

    >Please, show me a (portable or stationary)
    >computer that is not a calculator

    Ah, now we're achieving some clarity. You're *not* saying that computer inherently *provides a calculator program*. [Because it's possible to have a computer without such a program.]

    Instead, you're saying that a computer is a calculator because it performs calculations ... ie, that's what computers do when they execute instructions. Did I get this right?

    That is one of the arguments the Examiner made, and as I said in my original blog post, I think that's a ridiculous interpretation of "calculator" in the context of the Joachim application.

    I say a POSITA reading the Joachim application would view "calculator" more narrowly. To include special-purpose calculator devices. And probably other electronics devices that execute a calculator program allowing the user to perform calculations.

    ReplyDelete
  9. The actual logic used by the Board differs a little from the examiner's reasoning.

    The Board's logic was as follows

    1) Hwang teaches a radio telephone
    2) Hwang teaches a radio telephone can include PDA functions;
    3) PDA by definition are designed to include functions such as calendars, calculators, etc (Board cites to Microsoft Computer Dictionary apparently doing a little fact finding on its own)

    Therefore Hwang disclose a telephone which is a PDA which is a calculator.

    I think the use of the dictionary to show inherency is the weakest part of this argument. But I do find the BPAIs logic far more reasonable than saying all computers are calculators.

    ReplyDelete
  10. >The actual logic used by the Board differs a
    >little from the examiner's reasoning.
    >3) PDA by definition are designed to include
    >functions such as calendars, calculators, etc
    >[citing to MS Computer Dictionary.]

    Thanks for clarifying this. I see my original post did not mention this important fact finding done by the Board.

    I think both rationales -- "computer performs calculations so is a calculator" AND "PDAs by definition include a calculator" -- are weak.

    This looks like one of those cases where the Examiner thinks that a 102 is always than better than a 103. Definitely not true here. This case is perfect for a 103. The 102 reference which disclosed the other elements (housing base, carabiner clip, keypad) mentioned PDAs. And is therefore a good candidate to combine with a PDA reference -- one which actually discloses a calculator.

    I don't question the ultimate result here [no patent granted] but I do question the reasoning and even the findings of fact are suspect.

    ReplyDelete
  11. "That is one of the arguments the Examiner made, and as I said in my original blog post, I think that's a ridiculous interpretation of "calculator" in the context of the Joachim application. "

    Well I'm sorry you're wrong today. Maybe tomorrow will turn out better.

    "But I do find the BPAIs logic far more reasonable than saying all computers are calculators."

    That's probably because you don't know what a calculator or a computer really is, i.e. you lack technical training. Like Karren.

    Things like this are why people with a background in comp sci shouldn't be allowed to prosecute applications. It's like letting someone with a marketing degree prosecute. Give me a break.

    Although, yes, the board's inherency/implicit argument is decent as well. Just as ignoring the "calculator" part.

    Instead of limiting claims like this to a "calculator" we should assume that whatever is in the body of the claim is what makes a calculator. That would be a more reasonable way to read claims than we have now. Applicant as lexicographer ya know.

    ReplyDelete