BPAI reverses rejection of "configured to move" because Examiner's statement that reference "could move" was speculation

Takeaway: In Ex parte Tipley, the claims described physical parts "configured to" move in a specified manner. The Examiner acknowledged that the reference did not teach parts configured to move as claimed. The Examiner insisted that the reference nonetheless anticipated by treating "configured to" as "capable of" and further insisted that the parts in the reference could move as claimed. The Board treated this as an inherency argument. The Board then found that the Examiner's understanding that the parts could move was simply speculation. Since speculation is not enough to support inherency, the Board reversed the anticipation rejection.

Details:

Ex parte Tipley
Appeal 2009000300, Appl. No. 11/108,338, Tech. Center 2800
Decided September 18, 2009

The claims were directed to an arrangement of circuit boards in a computer. Two of the appealed claims are shown below, with the limitations at issue being highlighted:

5. A computer system comprising:
a first circuit board comprising a first connector;
a second circuit board ... having a second connector couplable to the first connector, wherein the second circuit board is configured to move in a first direction along the first circuit board to generally align the first and second connectors;

18. A computer system comprising:
a first circuit board comprising a first connector;
...a second circuit board coupled to the housing, wherein the second circuit board comprises a second connector; and
a biasing mechanism coupled to the housing, wherein the biasing mechanism is configured to bias the second circuit board along a curved path to connect the first and second connectors in the second position of the module.

The Examiner rejected all independent claims as being anticipated by the same reference.

With regard to the "configured to move in a first direction" limitation, the Applicant argued in the Appeal Brief that the limitation was not present in the reference because "housing end 70 blocks the daughter board 8 from moving along the mother board at one end, and surface 34 of housing end 72 blocks the daughter board from moving along the mother board 14 at the other end." [See Fig. 2 below.]

In the Answer, the Examiner further explained the rejection as follows:

[P]lease note that the recitation that an element is "configure to" perform a function is not a positive limitation but only requires the ability to so perform. In this case, Grabbe discloses that the second circuit board (8) can move in a first direction along the first circuit board (14), as shown in the following figure. (Emphasis added. See Fig. 1 below.)

 

The Board noted that the Examiner did not point to an express teaching of the limitation, and therefore analyzed under an inherency theory:

[W]e note that the Examiner’s finding, portrayed in the figure on page 8 of the Answer that allegedly shows the daughter board moving in a direction along the mother board via a directional line added by the Examiner, is based on the mere possibility of such movement and thus is speculative and insufficient to establish the inherency of such movement. The Examiner does not provide any reasoning to support such a determination.

The Board therefore reversed the rejection of the claim (claim 9).

With regard to the "configured to bias the second circuit board along a curved path" limitation, the Applicant argued in the Appeal Brief that the limitation was not present in the reference because:

the daughter board 8 is in contact with a ledge 68, it is impossible for the daughter board 8 to move along a curved path. See Grabbe Fig. 5. As such, the daughter board 8 moves laterally in a straight direction along the surface of the ledge 68 until the engaging surface 38 couples with the connector. [See Fig. 5 below.]

In the Answer, the Examiner further explained the rejection as follows:

[I]t is again noted that the recitation that an element is "configure to" perform a function is not a positive limitation but only requires the ability to so perform. In this case, the second connector (4) of  Grabbe can rotate around a pivot structure and along a curved path, as shown in the following figure. (Emphasis added. See Fig. 3 below.)

Once again, since an express teaching was missing, the Board analyzed under an inherency theory, and found the Examiner's rejection to be in error:

In this regard, we note that the Examiner’s finding portrayed in the figure on page 10 of the Answer that allegedly shows the daughter board 8 moving in a curved path via a curved line added by the Examiner is mere speculation. The Examiner does not provide any reasoning to support a finding that Grabbe’s circuit board inherently moves in a curved path. (Emphasis added.)

My two cents: I don't view this case as being about inherency, at least not in the classic sense. The Examiner's position seems to be that there is no difference between "capable of" and "configured to". The parts in the reference were not designed to move in the claimed manner – but could move a micrometer or two if enough force was applied.

I have two objections to the Examiner's argument. First, even if the claims used the phrase "capable of", this is a strained interpretation of that phrase "capable of". It's akin to saying that one piece glued to another is "capable of being released" simply because the pieces come apart with a pry bar. Second, the claims didn't even use "capable of", they used "configured to." The Examiner's interpretation of "configured to" is simply unreasonable in my opinion.

It's been a long time since I saw a "creative" rejection like this. I wish the Board had hit the Examiner's argument head on rather than shoehorning it into an inherency framework.