BPAI finds "configured to be housed within or detached from the bay" requires both configurations, despite use "or"

Takeaway: In an application directed to a replacement battery pack for an electronic device, the issue on appeal was the phrase "a replacement battery pack configured to be housed within or detached from the battery pack receiving bay" (emphasis added.) The Examiner took the position that since the claim used the word "or" in describing the battery pack configuration, only one of the configurations was required to be found in the prior art. The Applicant argued that the proper interpretation of the claim required both configurations. In particular, the Applicant argued that the phrase "detached from" implied that the battery pack was previously "housed within," and thus the claim required both configurations. The Board found the Examiner's claim interpretation to be unreasonably broad in view of Applicant's specification, which made it clear that "the claim term ““or”” [was used] to mean that the replacement battery pack is configured to provide some functionality, both when the battery pack is disposed in the bay as well as when it is detached from the bay." (Ex parte Godovich, BPAI 2010.) Details:

Ex parte Godovich
Appeal 2009004289; Appl. No.. 11/139,851; Tech. Center 2800
Decided:  November 15, 2010

The application on appeal disclosed a replacement battery pack for an electronic device (below).

A representative claim on appeal read:

     10. A portable electronic device comprising:
     a main body;
     a battery pack for supplying power to the portable electronic device;
     a battery pack receiving bay (120) formed in the main body for removably-housing the battery pack,
     the battery pack receiving bay (120) having a connector electrically connectable to the battery pack; and
     a replacement battery pack (200) configured to be housed within or detached from the battery pack receiving bay,
     the replacement battery pack comprising
          a power storage section having a secondary battery,
          a power input section having at least one power connector for receiving electric power for charging the secondary battery, and
          a power output section having an output terminal for receiving electric power from the power input section and for electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay to power the portable electronic device.
(Emphasis and reference numbers added.)

Claim 10 was rejected as obvious over Applicant's Admitted Prior Art and a patent reference, Shoji. The rejection relied on AAPA for teaching the main body, battery pack and receiving bay, and on Shoji for teaching the claimed replacement battery pack. The rationale supplied for combining the references was substitution of AAPA's battery with Shoji's battery "in order to use the battery for a variety of applications with high power capacity."

With respect to the "configured to" clause of the replacement battery pack, the Final Office Action alleged that "Shoji discloses a replacement battery pack (A) configured to be housed within or detached from the battery pack receiving bay (mounted or inserted in Second bay)." In a Response to Final, the Applicant argued that the Shoji's auxiliary battery A was not configured as recited in the claim. The Applicant explained that, rather than being "configured to be housed within or detached from the bay," "[Shoji's] auxiliary battery A is an external battery which is connected to the electronic device externally via a connection cable between the power output section 3 and the electronic device." The Applicant also argued the "output terminal" element of the replacement battery pack.

The Advisory Action noted only that "the teaching and elements are both shown in the prior office communication, and the arguments presented by the applicant are not persuasive." The Applicant filed a Pre-Apeal Brief Request, then an Appeal Brief, each of which repeated the same arguments for claim 10.

The Examiner provided new information in the Examiner's Answer. Specifically, the Answer explained (for the first time) that "the claim recites, '– housed within or detached from –' so examiner is required to show one of the two not both" (emphasis added). The Answer then explained that Shoji disclosed one of the limitations – "detached from the [bay]" – by disclosing a power supply cable between the auxiliary battery and the electronic device, such that the "auxiliary battery is detached from the battery pack-receiving bay when the power supply cable is disconnected."

The Applicant filed a Reply Brief to challenge the Examiner's claim interpretation:

[A]ppellant respectfully disagrees with the Examiner's interpretation of the alternative expression in lines 9-10 of claim 10. The second part of the alternative expression in claim 10 explicitly recites that the replacement battery pack is configured to be "detached from the battery pack receiving bay." The term "detached" in claim 10 relates to the replacement battery back being "removed" or "taken out of" the battery pack receiving bay. This is the context in which the term"detached" should be read because the recitation "detached from the battery pack receiving bay" is prefaced by "housed within or", which corresponds to the part of the alternative expression in which the replacement battery pack is housed within (i.e., inserted into) the battery pack receiving bay. Stated otherwise, the expression "detached from the battery pack receiving bay" in claim 10 corresponds to the part of the alternative expression in which the replacement battery pack is removed or taken out from the battery pack receiving bay from the configuration in which the replacement battery pack is "housed within" the battery pack receiving bay, as recited in claim 10.
(Emphasis added.)

The Board agreed with the Applicant, finding the Examiner's interpretation to be unreasonable in view of the specification:

     The Examiner does not find that the cited art teaches both configurations. Rather, the Examiner takes the position that because these noted claims employ the word ““or,”” the cited prior art only needs to disclose a replacement battery pack that possess one of the recited configurations –– not both.
     We find the Examiner’’s interpretation to be unreasonably broad. Read in light of the Specification, it is more than reasonably clear that Appellant used the claim term ““or”” to mean that the replacement battery pack is configured to provide some functionality, both when the battery pack is disposed in the bay as well as when it is detached from the bay.

Based on this unreasonable claim construction, the Board reversed the obviousness rejection of claim 10.

My two cents: The board got this one right. Sometimes OR means AND. That is, while OR can be used to signal a list of alternatives, sometimes OR requires the presence of all the alternatives. In my mind, that's usually the case with "configured to X, Y, or Z." That was definitely the case here. Here's the only description in the spec relating to detaching the battery pack from the receiving bay.

[0051] The structure and function of the connector 116 of the replacement battery pack 100 are the same as for a conventional battery pack used for portable computers. When the replacement battery pack 100 is housed in the battery pack receiving bay 120 of the portable computer 105, the connector 116 is electrically connected to a connector provided in the battery pack receiving bay 120 to form appropriate electrical connection and functions as an output terminal for providing power to the portable computer 105. When the replacement battery pack 100 is detached from the battery pack receiving bay 120 of the portable computer 105, the connector 116 of the replacement battery pack 100 can be electrically connected to corresponding connectors of a charging station and functions as an input terminal for charging the replacement battery pack in a conventionally known manner.

The spec clearly describes two configurations and in no way suggests that either is optional.

The Board focused on the narrow issue of interpreting "configured to X or Y". The Board reversed because the claim required both X and Y and the Examiner found only Y ("detached from").

However, the claim language went further that that, since it also included this specific recitation:

the replacement battery pack comprising ... a power output section having an output terminal for ... electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay 

The Applicant should have argued this particular point, since the Examiner did not allege that Shoji taught a replacement pack housed in the bay.

I note that the claim uses "for" ("an output terminal ... for electrical connection"). Some Examiners like to ignore any phrase following "for" as intended use. Some Examiners treat "when" the same way. It's best to find this out early in prosecution so you can either amend so that the Examiner gives the phrases patentable weight, or persuasively argue why the language is not intended use.

Finally, though I do think the Board was right to reverse, the Applicant might have been better off amending during prosecution so that the claims used AND rather than OR. Seems like the claim could easily have been structured to recite something like "a first configuration AND a second configuration."

Related posts:

Careful when using OR in a claim to modes
In a claim to "A" or "B", is B always optional

New blog: Florida Patent Lawyer

I find most of BPAI decisions that I blog about through various random methods. But in the case of Ex parte Denison, credit goes to the Florida Patent Lawyer blog -- he discussed the Denison decision here.

I've added this newcomer blog to my blog reader. Not only does it discusses patent prosecution topics (rare), Florida Patent Lawyer covers a nice mix of other topics too, including TTAB decisions and ITC decisions. In short, stuff that you won't find on every other patent blog.

In claim to “A or B”, is B always optional?

Ex parte Buckley
Decided March 10, 2009
(Appeal 2007-3617, Appl. No. 09/941,329, Tech. Center 2100)

I blogged about Ex Parte Buckley earlier (here), discussing a §112 rejection that really turned out to be a claim construction issue: whether “additional” modified one noun phrase, or two. It turns out there was another claim construction issue lurking in this case, one which didn’t get much discussion: when the claim recites “A or B,” is B optional?

The simplistic answer is “The claim uses the alternative so B is optional." But does the word “or” always mean in the alternative? I say No, not always — as usual, it depends on *exactly* what the claim says.

Here's claim limitation at issue: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle or a signal device transmitter.”

The Board agreed with the Examiner that “under the broadest reasonable interpretation of the claim the ‘hardware dongle’ may be read as optional.” (Decision, p. 9.) The Examiner laid out his argument in the Answer:

Additionally, as an alternate argument, Applicant's entire argument is moot in view of the fact that that the limitation requiring access without "an additional hardware dongle" is not even required by the claim when the alternative OR limitation requiring access without an additional signal device transmitter is utilized. Examiner again notes that evaluating this claim in view of the OR conjunction for the purposes of determining patentability requires the claim to be interpreted two ways, 1) wherein both the hardware and software layer can be accessed without the requirement for an additional hardware dongle OR 2) wherein both the hardware and software layer can be accessed without the requirement for an additional signal device transmitter.
(Examiner’s Answer, p. 38, emphasis in original.)

Note the Examiner’s conclusion that the use of “or” signals an alternative. In this case, I say the Examiner is wrong: the negative phrase “without” effectively changes the alternative to a combination. I think the correct claim construction is “both the hardware and software layer can be accessed without the requirement for an additional hardware dongle AND without the requirement for a signal device transmitter.”

To make this point clearer, consider this simpler example: “turning the vehicle without stopping or slowing.” Okay, my example limitation used the word “or” — but surely no one would say that stopping and slowing are alternatives? I think it’s clear that the claim actually requires two things: turning without stopping; and turning without slowing.

I was disappointed to see that the Board agreed with the Examiner on this, though it would have helped if the Applicant filed a Reply Brief to address the point. As a practical matter, it’s probably wiser to amend during prosecution rather than trying to convince the Examiner that “or” doesn’t always mean “in the alternative.” In this case, I would amend to: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle and without the requirement for a signal device transmitter.” Or maybe “wherein each of the hardware and the software layer” — because someone might interpret "both" as requiring simultaneous access?