Ex parte Watt
Appeal 20085801; Appl. No. 10/714,483; Tech. Center 2100
Decided March 31, 2009
The application on appeal related to microprocessor architecture. A representative claim on appeal read:
1. A method of controlling a monitoring function of a processor, said processor being operable in at least two domains, comprising a first domain and a second domain, said first and second domains each comprising at least one mode, said method comprising the steps of:
controllably monitoring said processor operating in each of said at least two domains,
setting at least one control value, said at least one control value relating to a condition and being indicative of whether said monitoring function is allowable in said first domain;
allowing initiation of said monitoring function in said first domain when said condition is present if its related control value indicates that said monitoring function is allowable; and
not allowing initiation of said monitoring function in said first domain when said condition is present and its related control value indicates that said monitoring function is not allowable.
The Examiner rejected the claims as obvious using a combination of two references. One of the issues on appeal was the claim term "control value relating to a condition".
The reference at issue, Angelo, taught a processor having a System Management Mode (SMM), and the Examiner equated entry into SMM with the controlled "monitor function" in a first (secure) domain. Angelo also taught that a System Management Interrupt (SMI) could cause the processor to enter SMM, and the Examiner equated the SMI with the claimed "control value ...being indicative of whether said monitoring function is allowable in said first domain."
The Applicant argued on appeal that Angelo's SMI (alleged "control value") did not meet the "related to a condition" limitation:
The SMIs which are asserted are a non-maskable interrupt having nothing to do with anything relating to a condition. There is no reference to a "condition" or suggestion that anything in Angelo is dependent upon recognition of a "condition." Additionally, there seems to be no stated indication by the Examiner as to how or why he believes the SMI is related to or discloses the claimed "condition."
In the Answer, the Examiner provided a dictionary definition of "condition": "a particular mode of being of a person or thing; existing state; situation with respect to circumstances." The Examiner noted that "this is a rather broad definition." The Examiner then explained how Angelo's SMI was related to several conditions:
- An SMI timer can be used to assert the SMI. Completion of this timer is a condition.
- A system request can be used to assert the SMI. The assertion of this system request is a condition.
- The assertion of the SMI is used to toggle System Management Mode (SMM). This mode is a condition.
The Examiner has not made any evidence from "Dictionary.com" of record in this application and therefore the Examiner's definition does not overturn the definition ascribed to the word by those of ordinary skill in the art in view of the present specification and the claims.
Appellants' specification describes a number of embodiments in which the "condition" can comprise a "secure domain" (page 4, line 17)' a "secure user mode" (page 4, line 23)'" a "type of monitoring function" (page 4, line 29)," a "trace monitoring function" (page 5, lines 1-2)" etc. The term "condition" is believed to be well known to those of ordinary skill in the art. However, should the Examiner contend that it is not, he is obligated to apply the definition set out in Appellants' specification so as to incorporate the various examples set forth therein. Accordingly, Appellants dispute the Examiner's "rather broad definition" from "Dictionary.com" as completely unsupported.
The Board agreed with the Examiner, and sharply criticized the Applicant's Reply Brief arguments about the meaning of "condition".
Appellants allege that the term “condition” has some (unidentified) special meaning in the art (Reply Br. 2), but do not refer us to any evidence in support of the allegation, nor tell us what that the unsupported, unidentified special meaning may be. Appellants also refer to a “number of embodiments” in the Specification and seem to assert that some (unidentified) special meaning of “condition” can be gleaned from the described embodiments (see id.), which, presumably, would distinguish over the conditions in Angelo that were identified by the Examiner. Thus, although Appellants allege (id.) there is a “definition” for the term “condition” set out in the Specification, Appellants not only do not tell us where the definition may be found, but also neglect to tell us what that the definition may be.
We will not, and cannot, read any of the specific embodiments described in the Specification into instant claim 1. [Citations omitted.]
The Board then explained in detail how Alverson disclosed the relied-upon claim limitations, and affirmed the obviousness rejection.
My two cents: The Board chastised the Applicant for not providing a definition. Do you have to provide your own definition to show that the Examiner's interpretation is unreasonably broad?
If the Examiner's interpretation is way off base, probably not. But if your facts are like these, where the Examiner's interpretation did seem reasonable, then yes, you should do more than throw the ball back by saying "The Examiner's definition is wrong."
The Applicant seemed to have a basic misunderstanding of broadest reasonable interpretation.
The Applicant argued that the Examiner was "obligated to apply the definition set out in Appellants' specification so as to incorporate the various examples set forth therein." Not true. While it is true that the claim is to be interpreted in a manner consistent with the spec, this does not extend so far as to read into the claims features that are clearly described as examples. As the Board noted in this case, "the scope of a claim cannot be narrowed by reading disclosed limitations into the claim." (citing In re Morris).
I think the Board was being a bit disingenuous by asking for a definition. The Applicant probably didn't offer a definition because a) the spec didn't have one and b) other dictionary definitions wouldn't have been any more favorable. It seems pretty clear to me that the Applicant was indeed relying on importing limitations into the claims.
Notably, the Applicants went to appeal with dependent claims that further narrowed the term at issue. But the Applicant didn't separately argue the dependents. Perhaps a further indication that the Applicant really did believe that the claim term deserved a more narrow interpretation.
Once the Examiner clearly explained how he was interpreting the reference to teach the claim condition, the Applicant should have pulled from appeal and amended the claims to further describe the condition. Better yet, if the Applicant had realized this before appeal, should have at least added dependent claims
Postscript: The Applicant filed an RCE after losing and appeal and eventually got a patent. The claims were narrowed to further define the condition:
said condition consisting of a respective one of (a) a domain that said processor is operating in, or (b) a mode that said processor is operating in or (c) a type of said monitoring function,
said control value being set to be an enable value for said related condition to indicate that said monitoring function is allowable in said first domain;
These three conditions essentially corresponded to the three "meanings" of condition that were argued in the Reply Brief.
Notably, the Examiner continued to apply the same art to these amended claims, and allowed them only after the Applicant filed another Pre-Appeal and then Appeal Brief.