BPAI finds that use of "or" requires teaching of only one option recited in the claim

Takeaway: In Ex parte Rokosz, the BPAI treated claim language involving "or" as an alternative limitation, even though the Applicant argued that the claim required the presence of both options recited in the claim. The limitation in question was "whether to configure at least one of said scheduled meetings for display ... as free time, or whether to configure said at least one of said scheduled meetings for display ... as busy time.” In support of its interpretation, the Board cited to MPEP § 2173.05(h) ("Alternative Limitations” and Markush-style claiming).

Details:

Ex parte Rokosz
Appeal 2009003688; App. 10/331,413; Tech. Center 2100
Decided  November 24, 2009

The patent application on appeal was directed to scheduling software. A representative claim on appeal read:

     1. A system for selectively exposing free time in a group scheduling system, the system comprising:
     a groupware system comprising a calendar of scheduled meetings between a plurality of groupware system users;
     a set of free time rules, each of said free time rules specifying whether to configure at least one of said scheduled meetings for display in a groupware client as free time, or whether to configure said at least one of said scheduled meetings for display in a groupware client as busy time; and,
     a free time rule processor configured to configure individual ones of said scheduled meetings to appear in a groupware client as free time to requesting ones of said groupware system users based upon associated ones of said free time rules.
(Emphasis added.)

The Applicant appealed a final Office Action rejecting the independent claims as being anticipated. In the Appeal Brief, the Applicant argued that the reference did not teach "the display of scheduled time as free time." According to the Applicant, the reference merely taught that a portion of a scheduled time period appeared as free time.

The Examiner's Answer contended, for the first time, that because the claim used the word "or" in describing the free time rules, anticipation required only a teaching of one or the other: the display of scheduled time as free time; or the display of scheduled time as busy time. Therefore, since FIG. 2 of the reference showed a schedule with 4 AM as Unavailable (claimed "busy time"), whether or not the reference also taught display of scheduled time as free time was irrelevant. Nonetheless, the Examiner continued to maintain that the reference also taught the alternative condition.

The Applicant filed a Reply Brief to dispute this new interpretation of the phrase involving "or," arguing that the claims required both options to be present in the reference:

The Appellants' claims require the presence of "a set of free time rules", each of the free time rules specifying whether (1) "to configure at least one of the scheduled meetings for display in a groupware client as free time", or whether (2) "to configure said at least one of said scheduled meetings for display in a groupware client as busy time". This is a binary choice that must be specified by the free time rules as set forth by the express language of the claims. The Examiner has failed to identify this limitation in its entirety in Srimuang.

The Board interpreted the claim to require only one of the options, citing to the MPEP's sections on Alternative Claim Language and Markush claims:

At the outset, we agree with the Examiner that in order to show anticipation, only one of the recited alternatives needs to be disclosed by the reference (Srimuang). [FN1] Thus, the Examiner need only show a “set” (of at least one ) “free time” rules specifying: (a) “whether to configure at least one of said scheduled meetings for display . . . as free time,” or, (b) “whether to configure said at least one of said scheduled meetings for display . . . as busy time.”
[FN1] See MPEP § 2173.05(h), “Alternative Limitations” and Markush-style claiming.

The Board went further to find that the reference also taught both alternatives:

We broadly but reasonably construe the claimed “scheduled meetings” as reading on any designated slot in a calendar of scheduled meetings, as the actual subject matter of the designated happening is a non-functional limitation in the claim (see below). Given this construction, we find Srimuang discloses that employee A has indicated that 8:00 AM and 4:00 PM are free time slots, as shown in Fig. 2.

The Applicant filed a Request for Rehearing, arguing that "no species of a rule is specified [in the claim] using Markush phraseology. Rather, a binary choice is presented that a rule specifies 'whether to' do one action, 'or whether to' do another action."

The Board was not persuaded. As explained in its Decision on Request for Rehearing (Apr. 28, 2010):

     Although Appellant's claim 1 is not a Markush claim per se, the claim clearly defines each free time rule using alternative language ("or"). Appellant's arguments appear to impute that each free time rule should be read with conjunctive prongs. (Request 2-3). We particularly note that none of Appellant's claims on appeal recite the argued "binary choice" language. (Request 3, ¶ 1, l.7). We will not endeavor to read such argued limitations into the claim. 
     Moreover, Appellant could have amended his claims during prosecution to recite "and" instead of "or" (cf: "binary choice") to clarify the meaning and intended scope of the disputed claim term "free time rule." However, Appellant chose not to do so. 

Postscript:  After appeal, the Applicant filed an RCE with these claim amendments:

a set of free time rules, each of said free time rules specifying whether as a binary choice to configure at least one of said scheduled meetings for display in a groupware client either as free time, or whether to configure said at least one of said scheduled meetings for display in a groupware client as busy time;

The Examiner then rejected under 112 First Written Description, noting that "the limitation 'binary choice' is not supported by applicant's original specification."

The Applicant responded by referring to a paragraph in the spec and asserting that the paragraph "describes with clarity a binary choice of exposing a meeting as free or busy time."  The Examiner then withdrew the Written Description rejection. 

My two cents: I wish I knew a bulletproof way to claim options, since options are a common pattern in software patents. I've encountered more than a few Examiners who insist that any use of the term "or" invokes the Markush rule "only need to find one of them in the reference." I was disappointed to see the Board also apply this simplistic analysis. Maybe there are better ways to express the option pattern in this claim, but on balance, the better interpretation is that the claim requires a system that supports both options.

The Applicant's attempt to clarify by amending after appeal ran into trouble with Written Description. Originally I wondered if the Examiner was thinking that "binary choice" specifically limits to two options, where the spec described two options but probably didn't strictly limit the number of options to two. I would probably have left out "binary" for this reason. But apparently that wasn't the real issue, since the Examiner withdrew the rejection.

I really question the wisdom of appealing again, because the Board explicitly found that the reference taught both options, based on their construction of "scheduled meetings." I don't see that the Applicants have addressed this issue going up to the next appeal.

It's possible that the Applicants will get lucky and the Examiner will cave before it gets to the Board. At this time, the Applicant has filed an Appeal Brief, but the Examiner hasn't filed the Answer. The Applicant argued that the Examiner has not explained how the reference teaches the "binary choice" language. Perhaps the Examiner won't recall the Board's earlier claim construction, or will somehow think that "binary choice" makes the Board's construction of "scheduled meetings" irrelevant.