Wednesday, February 10, 2010

"Responsive to" means action must result from preceding event (Ex parte Jerding)

Ex parte Jerding
(Appeal 2009-001407; Appl. No. 09/590,488; Tech. Center 2400)
Decided: December 22, 2009

No need to get into details of the technology, or even of the claims. This case was all about the meaning of "responsive to."

The Applicant argued:
[A] step 'responsive to' another must not only occur later in time, but must also be performed as a direct or indirect result of the first step being performed.
The Examiner took a much broader reading:
Specifically, the Examiner states that "responsive to" is being interpreted "merely as an ordered operation of process steps wherein certain steps are performed indirectly following or in return to the condition having occurred" (Ans. 13). The Examiner further clarifies his position: the open ended nature of the claims does not require that the "determining" step be performed immediately after rebooting (Ans. 15).
The Board referred to a dictionary definition of "response," then explicitly construed the phrase at issue:
Based upon this definition, we are persuaded by Appellants' arguments. The broadest reasonable interpretation of the claim term "responsive to" requires that a step or action necessarily result from a preceding action or event. Contrary to the Examiner's position, it is not sufficient that an act merely follow or occur subsequent to another action or event.
(Decision, p. 7.)
Once this phrase was interpreted, the result clearly followed:
The Examiner bases the rejection of claim 74 solely on the broader, alternative interpretation of "responsive to," and does not allege that the cited prior art would render claim 74 obvious under the narrower interpretation that we adopt today (see Ans. 3-21). For the foregoing reasons, then, Appellants have persuaded us of error in the Examiner's obviousness rejection of independent claim 74.
(Decision, p. 8.)
I think this case is a slam dunk, because this is the reasonable interpretation of "responsive to." And I'm certainly glad to see the Board take this position. However, it appears to be in direct conflict with an earlier decision, Ex parte Golovinsky, in which the Board explicitly construed "'in response to' as meaning "after' or 'following'." (I discussed Ex parte Golovinsky here.) Note that Ex parte Golovinsky is in the same technology center as Ex parte Jerding! I'd prefer a little more consistency from the BPAI.


  1. Interesting, especially, as you note, in contrast to Golovinsky. At least in Golovinsky the Board noted a logical relationship between the "responsive to" step and the prior step, noting that the "action X in response to action Y" couldn't actually take place unless "action Y" had occurred. Granted, this is different than action Y causing action X, but in the present case, it doesn't appear that the Examiner alleged anything more than a temporal relationship.

  2. Yeah, the inconsistency really annoys me. In my opinion, "responsive to" ought to have a fairly standard construction, as long as there isn't anything funky in the spec to redefine it.