January, 18th, 2019 at 10:21 am
By Wesley W. Whitmyer, Jr. Read Part 1 I have been asked this question hundreds of times. You can probably guess that the person doing the asking has just been accused of patent infringement. [Read More…]
February, 28th, 2017
WHIPgroup attorneys were successful in overturning all rejections on Appeal of a patent application directed to time slot allocation for wireless networking. The inventors came up with a new and unique way of allocating time slots based on dependencies between field devices. The claims were rejected as obvious over two publications directed to networking. The rejection came down to the Examiner’s interpretation of the claimed “dependency information,” which the Examiner asserted was disclosed by an interface in the prior art for creating a network topography that defines routing between field devices.
On appeal, WHIPgroup argued that during prosecution claim limitations should be given the broadest reasonable interpretation that requires it be both “reasonable” and “consistent with the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). In particular, “[t]he broadest reasonable interpretation does not mean the broadest possible interpretation.” MPEP 2111. Moreover, correct claim interpretation is a predicate to examination. In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007) (reversing PTO for overly broad and unreasonable claim interpretation). As a result, WHIPgroup argued the rejections could not stand as a matter of law.
WHIPgroup argued that the specification at issue informs the meaning of dependency information, stating “[a] dependency exists between some of the control loops in a typical process in the sense that one control task in a controller may require input from another control loop in order to complete a control task.” For example, a dependency exists in a control loop because it requires input from a sensor. It is this dependency information that can be used to generate an efficient communication schedule according to the claimed invention. Simply allocating a duplicate path, as in the cited references, does not disclose a dependency between a plurality of field devices, much less that time slots in the schedule are allocated according to such dependency information.
The Board indicated that interpretation of the claim term was dispositive on Appeal. Agreeing with WHIPgroup, the Board stated “claims should always be read in light of the specification and teachings in the underlying patent.” The Board found that the cited prior art did not teach the claimed limitations because “[a]lthough the cited portions of [prior art] teach paths between field devices, they fail to teach or suggest dependency information in terms of information indicating whether a dependent device requires as an input, an output of another device.”
This case reaffirms the responsibility of examiners to consult the specification and maintain reasonable interpretation of claim terms. This is particularly important for computer-implemented inventions that claim programmed functionality and use claim terms defined by the context of the invention.
WHIPgroup attorneys argued this case on January 6, 2017 in its new video conference room, which gives clients a cost-effective alternative to in-person arguments in Washington, D.C.
WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.
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