Wednesday, January 20, 2010

Implicit teachings of a reference

When arguing that a reference doesn't teach, some practitioners focus exclusively on the explicit or literal teachings of the reference, and ignore what a POSITA would understand the reference to teach implicitly. There are some good reasons for doing this — prosecution history estoppel and the danger of mischaracterizing the reference come to mind. But be aware that MPEP 2144.01 states that the Examiner is allowed to use implicit teachings too:
[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.
In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Sometimes reading between the lines means simply recognizing that a reference is using a different term than the one that appears in the claim. Other times, it means putting together several explicit teachings to draw an inference. And sometimes it means recognizing that the absence of a teaching is evidence that something wasn't important enough to discuss rather than evidence that it wasn't known.

Here are a few instances where the BPAI affirmed a rejection based on implicit teachings.

Ex parte Nawathe: "While Lee's system specifically discloses loading data for a single XML document into the relational database, it is not necessarily so limited. In other words, the ordinarily skilled artisan would have recognized that loading multiple XML documents in a relational database to be within the purview of the prior art as evidenced by Lee's disclosure that metadata is generally known to describe information about more than one of such documents."

Ex parte Symbol Technologies, Inc.: "All that is required by these claims is that the keys be capable of being individually engaged by the thumb or fingers of the hand holding the housing ... As articulated by the Examiner, the size of Gombrich's pocket terminal is sufficiently small to allow users to hold the pocket terminal in the user's palm and reach the keys with their thumb without pressing other keys. We find that one of ordinary skill in the art reasonably would infer that the keys of Gombrich are capable of being individually engaged by the thumb of the hand holding the housing in view of the specifically disclosed dimensions of the pocket terminal and the teachings in Gombrich that the pocket terminal is 'pocket-sized', 'portable' and allows for 'one handed' operation.”

Ex parte Zybura: "We find that the ordinarily skilled artisan would have readily recognized that Thatcher's disclosure of inconsistencies that arise between the replicas of a namespace due to the propagation delay in the updates teaches or suggests the claimed determination that modification to a namespace results in conflicting information between the replicas. Similarly, we find that Thatcher's disclosure of all the replicas having identical objects at the end of the update teaches the claimed removal of the identified conflict before the update takes place in the second namespace."

Ex parte McCormack: "We find that Jiang's storage of device preferences and service preferences teaches storing the claimed digital identity for a wireless user device. While Jiang does not particularly disclose the user device to be a DTV, it suggests that the WPM would provide seamless access to information without regard to the type of device available to the user. In other words, the ordinarily skilled artisan would readily appreciate that regardless of the type of device available to the user, the WPM's database or repository would still store digital entity or preference data for whatever device that it identifies."


  1. And then you get attorneys spouting off caselaw about "inherency" when the examiner plainly stated something was implicit. The two terms are not the same, no matter how much someone wants them to be.

  2. I agree implicit <> inherent. And that addressing inherency if it clearly wasn't asserted is probably a waste of paper.

    I sometimes see Office Actions where the Examiner used the magic word "inherent" yet it seems clear to me there's no case for inherency. [E.g., I can think of a counterexample off the top of my head.] In such cases, I may traverse inherency and then also address why the reference does not implicitly teach.