Details:
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.
(Emphasis added.)
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.
"Do you have to provide your own definition to show that the Examiner's interpretation is unreasonably broad?"
ReplyDeleteNah, but you probably better. Otherwise, look out for the chastising!
"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."
Or C. the term isn't actually as widely known as applicant believes it to be.
I note that C pops up from time to time in my art. Indeed, it's funny that, when pressed the attorney cannot find one shred of evidence of the terms they're bandying around so throughtlessly. When pressed on the phone they'll insist that even a googling will reveal countless patents and literature using the word when in fact, googling it with them reveals no such thing. Egg upon there face doest abound. But hey, that's what happens when the applicant actually has to provide some evidence of the outrageous positions that crop up in patent prosecution.
"It seems pretty clear to me that the Applicant was indeed relying on importing limitations into the claims.
"
Idk about that, I think they just wanted a definition that at least accomodated their embodiments. Remember the old claim construction lawl where courts will eschew a contruction that does not allow for the embodiments set forth to be within them.
IMO the attorney working the case was simply a tard, it happens.
"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."
ReplyDeleteBoy these lifer APJ's are legal ignoramuses. There's nothing worse than sh!tty examiners who become sh!tty APJ's. It's the classic examiner nonsense of, "Applicant doesn't explicitly define the term so I can use the dictionary definition."
Uhm, no. The BRI is that which is 1) consistent with applicant's use of the term AND 2) consistent with the interpretation one of ordinary skill would arrive at.
Applicant wasn't arguing, or even "seeming to assert" that there was a "special definition" when referring to their embodiments. Applicant was arguing the examiner's interpretation of the term "condition" was not consistent with Applicant's use of it in the spec. The conclusion that because Applicant did not provide an explicit, or "special," definition to a claim term then the examiner is free to run to the dictionary to provide an interpretation completely divorced from the context in which the term is used is ridiculous. In their decision, where does the Board even acknowledge that the examiner is required to analyze the intrinsic evidence (e.g. the spec) before looking to extrinsic evidence (i.e. the dictionary)? I guess they missed class the day that Philips was covered.
But that's what you get when you have tard lifer APJ's.
>Applicant wasn't arguing.. there was
Delete>a "special definition" when referring
>to their embodiments.
Disagree. The Appeal Brief said: "the Examiner is obligated to apply the DEFINITION set out in Appellants' specification."
Now, maybe all the Applicant really meant to say was "Examiner's definition not consistent with the spec." And in fact, the first part of the Appeal Brief argument said just that. But the Applicant went to far by referring to a definition in the spec.
Personally, I feel strongly that the Board got this one right. That is, that the definition used by the Examiner was indeed consistent with the spec. The way I see it, the Applicant was trying to import limitations from the spec into the claims.
Very different from a scenario where the Applicant's claims says "nail", the spec is all about nails as fasteners, and the Examiner uses a reference which uses the generic term "nail" but is clearly talking about fingernails and toenails.
Now *that* is a classic case of an interpretation that is inconsistent with the spec.
You got me. Extremely poor choice of word by applicant's attorney. Looks like an old timer. Probably used to making the same arguments over and over without using precise language.
Delete"Probably used to making the same arguments over and over without using precise language."
ReplyDeleteOne of the (many) things I don't like about the BPAI is that they'll let the Examiner get away with anything in terms of having a deficient analysis or mischaracterizing the law and/or the facts.
Didn't set forth a proper rational to support your legal conclusion of obviousness? Don't worry, the BPAI will come up with one for you.
Didn't set forth a claim construction for an important term being argued? Don't worry, the BPAI will come up with one of those as well.
Didn't present evidence to support your findings? Don't worry, the BPAI will make that up as well (or overlook that "minor" problem).
The reference doesn't teach the limitations? Don't worry, the BPAI will state that "the limitations weren't positively recited" (again, don't worry if you didn't make that argument in the Office Action, the BPAI will make it for you).
Got a functional data structure that you cannot find prior art to teach? Don't worry, that functional data structure now becomes non-functional descriptive matter and the BPAI will (erroneously) cite Lowry and some "printed matter" cases to ignore it (again, no need to make that argument in the Office Action, the BPAI has your back).
Didn't fight that claim construction provided by the Appellant? Don't worry, the BPAI will state that the arguments (i.e., the characterization of the claim language that doesn't use the exact language of the claim and nothing else) aren't commensurate with the claim language and proceed to ignore them.
Are your findings of fact so f'd up that there is no way they establish that the claimed limitations have been taught? Don't worry, the BPAI will craft new findings of fact (and won't even bother to label them as new grounds – you see, they assume that this is what you were thinking anyway – even if you never bothered to put it on paper).
However, if the Applicant doesn't frame the argument just perfectly (despite it being pretty clear what was being argued), the BPAI will slap that argument down. There is no illusion of impartiality from the BPAI. They will look for any excuse to affirm (and will make some up along the way).
For an Examiner to be reversed means that the Examiner's really f'd up so badly that even the BPAI couldn't save them.
Half of what I write in an Appeal Brief is to make sure that the BPAI doesn't try to f' me later on. Of course, they find new ways of doing it, but that is part of playing the game.
Or you could simply learn to be persuasive before the examiner. That can work in some instances (nearly all) and then you don't have to worry about the board fin on ya.
DeleteThe offer remains open: anytime you feel that you can be more persuasive with your fellow examinertards than those of us actually practicing, you're welcome to try. Of course, first you'll have to persuade some law school to admit you and/or some law firm to hire you.
DeleteGood luck with that.
"Or you could simply learn to be persuasive before the examiner."
DeleteI'm persuasive before the examiner far more times (as evidenced by the allowances and reopend prosecution) than my appeals ever make it to the BPAI.
As is pretty evident you are employing Examiner-logic (i.e., take a false premise and build a fallacy from it). Here, the false premise is that all my appeals go to the BPAI. The fallacy is that my appeals are not persuasive.
You guys need to get new material because the old material just doesn't work.
You're wasting your time with 6tard. Despite the fact that 75% of the applications in which a pre-appeal or appeal brief is filed get re-opened, he still insists it's because the examiners are too lazy to conduct a conference. I guess it's easier to issue another sh!tty rejection than get 5 minutes of SPE and QAS time. Those people are so incredibly busy doing absolutely nothing that doing a text search and then cutting and pasting some irrelevant portions of the top 2 or 3 results and then providing a nonsense reason to combine is easier.
Delete"anytime you feel that you can be more persuasive with your fellow examinertards than those of us actually practicing, you're welcome to try."
DeleteI don't just try JDtard, I do.
"Here, the false premise is that all my appeals go to the BPAI. The fallacy is that my appeals are not persuasive."
DeleteMy only "premise" at the outset is that you're afraid of the board fin' on ya. You gave us that initial premise. If all of the other nonsense you blather on about is also a good "premise" then all the premise combined indicates that you're simply a overly paranoid scardy cat.
I appologize, I was unintentionally holding the mistaken premise that you weren't an overly paranoid scardy cat. But, that's the price I was willing to pay to try to help you out in a more civil manner.
But, since we've worked that out, carry on.
" I guess it's easier to issue another sh!tty rejection than get 5 minutes of SPE and QAS time. "
DeleteJD is still "guessing" about this after years of it showing in his and other people's practice. In any event, I've got good news! Since the examiner's answers will be marginally easier to write you can expect a marginal increase in your cases going forward immediately to the board. YAY. Or ... not. I don't know, depends on your point of view.
Says the examinertard who can't even persuade his SPE or a QAS to give him five minutes for a conference.
DeleteWho the f told you that ya tard? I have no trouble "persuading" them to have a meeting. It is just a hassle and then it can be an even bigger hassle if it falls through.
DeleteI'm not really sure why or where "5 minutes" came into the conversation, I suppose your tarded brain just farted that out.
Such a tard. But keep "guessing", eventually you'll make like a broken clock.
I can hardly believe it takes more than 5 minutes for a SPEtard or QAStard to say, "Looks good to me, send it up!" or "Just re-open and send out a new, sh!ttier rejection." As that is the end result of all of these conferences, why would it take longer than that?
Delete"I do."
DeleteYou are king of the dipsh!ts, no doubt about that.
As the Texans would say, all hat, no cattle.
My family sold our cattle because they were a PITA. But we got nice hats out of the deal :)
Delete"I can hardly believe it takes more than 5 minutes for a SPEtard or QAStard to say, "Looks good to me, send it up!" or "Just re-open and send out a new, sh!ttier rejection." As that is the end result of all of these conferences, why would it take longer than that?"
Well let's see, when you go into a conference sometimes you have a mini-conference with your SPE to just make sure he is on the same page before you got into the conference proper. That takes 5, 10, 15.
And then, you go have the actual conference where the appeals guy will sometimes want to know where all the limitations are or will want to know some technical something etc. etc. ensuring that in your pre-conference 30 minute "review the case" time you managed to fully map the claims to all elements in all of the prior art and that you understand the case perfectly after having not seen it for 5 mo. If you do not or if you fail on any of these things the conference can devolve into a long drawn out bunch of ridiculousness.
The second conference usually lasts about 20-30 min but on a rare occasions the QAS knows your art and is able to actually read the case and so it can take 5 minutes. And of course on other occasions it can take longer, for instance in a case where you wrote an totally sweet looking office action to pass off the SPE's 103 grounds of rejection which he and the appeals guy thinks is golden and you think is more than a bit bizarre and simply wasn't "laying in the middle of the road" so to speak. And of course those are just a few of the things that can happen.
Remember, I've only been here 5 years and have a grand total of like 8 or so pre-appeals/appeals with most of them having been filed more than 3 years ago. And also remember that I'm better than the vast majority of my peers at getting to what the actual issue is in the case in legal terminology due to having spent time reading decisions and bsing with attorneys on PO. Without the ability to really understand what the issue is (for instance being able to spot that the actual problem in the case is claim construction) and having put it down on the record then sht can go down very weird in an appeals conference.
"The term "condition" is believed to be well known to those of ordinary skill in the art."
ReplyDeleteI'm a long-time patent practitioner and have had my frustrations with examiners and the BPAI but even I would slap an appellant upside the head for stating "is believed to be" instead of demonstrating that the term "condition" WAS AND IS well known to those of ordinary skill in the art and explain why.
this reminds me of a case you had a while ago about a GPU where Appellant gives many examples of a GPU but doesnt define what a GPU is and so couldnt prove that Examiner's interpretation was incorrect in light of the spec
ReplyDeletealso i notice the Appllant talking about making dictionary evidence of record - per new appeal rules dictionary is no longer considered evidence so you dont have to go through formal channels to have it considered just point out the definition
>case you had a while ago about a GPU where
ReplyDelete>Appellant gives many examples of a GPU but
>doesnt define what a GPU is
Interesting observation. Certainly both cases are about the failure of the Applicant to provide something that the BPAI recognizes as a definition.
I am sympathetic to the Applicant in the GPU case, because the Applicant did indeed present evidence of how a POSITA understands the term (ie, journal article about GPUs). Just didn't rise to the level of a definition, according to the Board.
Not sympathetic in this case, where the Applicant did nothing more than point to a couple of places in the spec -- which clearly were not definitions of the term condition but rather examples of specific conditions -- followed by some vague hand-waving ("It is believed that condition is understood by a POSITA").
>per new appeal rules dictionary is no longer
>considered evidence
Yep. I'm glad to see this new rule.
It's a bummer to have to file an RCE at Final to get evidence in the record. Because usually it's only at Final that I have any idea of how the Examiner is interpreting the claims and the references. In those cases where it's clear from the first OA, I go ahead and submit evidence in my very first response if appropriate.
"Just didn't rise to the level of a definition, according to the Board."
ReplyDeleteIt doesn't have to "rise to the level of a definition." Applicant is not required to provide an explicit definition for any claim terms. Applicant may use any term according to its ordinary and customary meaning as would be understood by one of ordinary skill in the art.
>Applicant is not required to provide
Delete>explicit definition for any claim >terms.
Agreed: not in the spec; and not during prosecution ... until the meaning of the claim term is at issue.
>Applicant may use any term according
>to its ordinary and customary meaning
Agreed.
But how do we determine "ordinary and customary meaning"?
>It doesn't have to "rise to the level
>of a definition."
Sure, Applicants can rely on ordinary meaning. But what do you do, as in the "GPU case" (Ex parte Brunner), when that meaning is precisely what is at issue?
Would you agree that a definition, rather than a list of examples, is the *best* evidence of meaning?
And that something that is *nothing but* a list of examples is weak evidence of meaning?
I see the journal article in Ex parte Brunner as somewhere in the middle of the spectrum, and for me, it was good enough evidence of meaning to a POSITA. Some hedging with words like "for example", but so much as to dilute its overall explanation of what a POSITA understands a GPU to be.
And as I've said before, I come out the other way in Ex parte Watt (the "instant" case). The uses of the term "condition" in the Applicant's spec were purely examples and did not say to me "when a POSITA says 'condition' he means a) secure domain; b) secure user mode or c) type of monitoring function
"Would you agree that a definition, rather than a list of examples, is the *best* evidence of meaning? "
DeleteNo. Again, you're not arguing for a definition. You're providing evidence of the ordinary and customary usage of the term. If you cite 2, 5, 10, umpteen prior art references that all use the term, and also include evidence and/or examples of structures/processes/etc. that are covered by the term, and the examiner is interpreting the applied reference in such a manner that there's no way one of ordinary skill in the art would find the examiner's interpretation consistent with what one of ordinary skill in the art would understand the term to mean, or include, that's all you have to do. You don't have to provide a definition.
To use your widget example, suppose the examiner says, "The blodget of Jones is the claimed widget." You cite some references that disclose that a widget may be a thingamajig, a whatchamacallit, a doohickey, an everlastinggobstopper, or a supercalifragilisticexpialadocious. No reference uses the term widget in any way that would suffice as substantial evidence that one of ordinary skill in the art would regard the blodget of Jones as a widget. Do you then have to argue, "The definition of widget is..." I say no. You simply have to argue that the examiner's interpretation is not consistent with the interpretation of "widget" that one of ordinary skill in the art would arrive at. The interpretation from the examiner is not reasonable.
"Sure, Applicants can rely on ordinary meaning. But what do you do, as in the "GPU case" (Ex parte Brunner),"
ReplyDeleteThere's this new thing called evidence. All the cool kids are doing it.
Gee, you make it sound like I'm not aware of the use of evidence to show meaning.
DeleteYet my comment shows that I am definitely aware of this important tool -- the next few sentences discuss how the Applicant in Brunner used evidence to show meaning.
My question was aimed at the previous commenter, who seemed to say that you don't need to offer a definition but can instead rely on plain meaning.
Karen,
DeleteDon't waste your time responding to 6tard. He doesn't understand evidence, facts, or anything else.
Apologies Karen I didn't mean to make it sound like you're not aware of the use of evidence. I meant to make it sound like you still don't understand what to do in instances like the GPU case even after I bothered to hold your hand through it.
Delete"However, I believe in order to win this case you don't want to alter the construction of a "graphics processor" you want to alter the examiner's construction of a crypographic one. So you'll need evidence of that, not of the graphics processor. Obviously if the examiner bought into your stuff about "designed for" vs. "used for" then he wouldn't have made the rejection in the first place, so you need to alter his construction of the claim, not of the reference, he knows good and well what a graphic processor is designed for. "
^Was all you needed to do in the GPU case. Specifically submit evidence as to what posita would consider to be a crypto processor and then state how that is different from what was in the reference.