The power of Only

As discussed in previous posts, the Broadest Reasonable Interpretation can cause havoc during prosecution by introducing unintended claim scope that is difficult to undue, thereby creating prior art problems where none should exist. While patent specifications drafted with a range of invention scope can help alleviate this issue, it is hard to predict all of the ways issues can arise many years in the future given the "creativity" of some examiners and the tendency of the Office to use the broadest, most unreasonable, interpretation. 

One way to provide options during prosecution is to utilize negative descriptions in the specification, as well as to make use of the term "only." While such description should be carefully worded in the specification so as not to be the sole embodiment or preferred embodiment, having it can be extremely helpful when prosecution becomes difficult.

An example is illustrated in a recent PTAB ex parte case of SAP. The application (SN 13/345,102) relates to permitting an end user to extract data from a database, and permitting the end user to predominantly extract only the data that is desired. Claim 1 sets forth a system with emphasis added by the PTAB:

claim 1 SAP.png

The examiner relied on a combination of reference that showed retrieval of data in a subset of records.  However, in the database arts, a record is distinct from a field - the PTAB confirmed this by citing to the Microsoft Computer Dictionary of 2002 explaining that a record was a data structure that is a collection of fields, whereas a field is a location in a record in which a particular type of data is stored. The examiner reasoned that since the combination of references could retrieve data using a subset of fields, that was sufficient to meet the claim language. However, the claim required that the data retrieved was limited to the subset of fields. Since the prior art did not distinguish between retrieval of fields or records, and because the claim was limited to "only" the subset of fields being the data, the PTAB confirmed that the rejection was improper. 

While selective retrieval of data from a database at first blush sounds a lot retrieving a subset of fields - the Examiner has the burden to prove that the combination actually results in the limitations and so SAP was successful in reversing the rejection.

So, when drafting an application with a specification having a range of scope, consider strategic use of terms like "only" in order to keep your options open during prosecution.