tag:blogger.com,1999:blog-6733236595417664807.post5439094360965522146..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: PTAB decisions involving failure to specify a limit in a claimKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-6733236595417664807.post-89321823011218071642015-01-27T17:35:27.449-05:002015-01-27T17:35:27.449-05:00>claim covers as close to zero as would perform...>claim covers as close to zero as would perform the functions of a channel. <br /><br />Gotcha. Read "channel" in context. Not the bare naked definition -- something like "narrow passage" or "narrow cut." What matters is what "channel" means to a POSITA in the manufacture of semiconductor devices.<br /><br />>So seems like the claim still puts the public on notice as to what scope is covered.<br /><br />Agree. I'm not sure it matters here, but for the record, note that the indefiniteness standard used during prosecution ("amenable to two or more plausible interpretations") is different than the one used in litigation. <br /><br />>akin to reading the number range all alone rather than reading <br />>the number range as a *further limitation* of "channel."<br /><br />Reading a limitation in isolation? Gee, I've never seen *that* happen :-)<br /><br />>my lack of expertise in the subject matter prevents me from carrying on much conversation. <br /><br />To the contrary! Your additional explanation / reasoning seems cogent to me. I'm glad you contributed. <br />Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-34514460078266112522015-01-27T17:21:15.569-05:002015-01-27T17:21:15.569-05:00"The argument "non-zero as a matter of l..."The argument "non-zero as a matter of logic" doesn't address this concern. But the spec does."<br /><br />This is where my lack of expertise in the subject matter prevents me from carrying on much of a conversation. Let's say, taken alone, the recited number range encompassed small values such as 0.001 microns (and of course smaller values too). However (speculating here) a value as small as 0.001 microns would not actually permit the functions of a channel, so it would not actually be a "channel." In that case, POSITA would have known that a "channel" must necessarily be larger than this in order to function.<br /><br />That is, the claim covers as close to zero as would perform the functions of a channel. As for the scope of the claim, then, although POSITA might not the exact numerical value at which they stop infringing, they would know the -function/property- at which they stop infringing. So it seems like the claim still puts the public on notice as to what scope is covered.<br /><br />From a different perspective, it seems like this is akin to reading the number range all alone rather than reading the number range as a further limitation of "channel."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-70767293454413519622015-01-27T14:54:02.570-05:002015-01-27T14:54:02.570-05:00>If a channel cease to exist as its length appr...>If a channel cease to exist as its length approached zero, then "channel" <br />>itself would be a limitation that requires non-zero value <br />>[this reasoning] seems "cleaner" than importing limitations from the spec.<br /><br />Gotcha. You're referring to the Board's mention of the spec when interpreting the claims. <br /><br />I think you make a good point: arguing that channel must be non-zero as a matter of *logic* is a stronger Applicant argument than relying on the spec. Especially because when an Applicant mentions the spec, the most common Board reaction is "can't import limitations from the spec."<br /><br />OTOH, non-zero doesn't really end the inquiry. The Examiner's position was also (at least implicitly) that the claim covered some very small non-zero values, yet it wasn't clear how close to zero the claim covered. The argument "non-zero as a matter of logic" doesn't address this concern. But the spec does. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-52842593758605577282015-01-26T15:59:01.868-05:002015-01-26T15:59:01.868-05:00All good decisions. As for the Yamazki case, I'...All good decisions. As for the Yamazki case, I'm not an electrical engineer, but I'm left wondering if a "channel" would still exist if it had no length. If a channel would cease to exist as its length approached zero, then it seems like the term "channel" itself would be a limitation that requires some non-zero value for the length. I don't know if that's a technically reasonable way to look at the matter, but it seems "cleaner" than importing limitations from the spec.Anonymousnoreply@blogger.com