BRI - PTAB Confirms Unreasonable Interpretation Improper

It looks like cases such as in re Smith and PPC Broadband are having a huge impact in PTAB decisions. I have personally had the issue come up in multiple PTAB hearings this year, and it is showing up in many of the PTAB decisions I review. One example is S/N 11/693,604. The application relates to a user interface where, responsive to receiving a press input, the system displays additional information in a preview of the content, only as long as the press input is held down. The last part in italics was the source of the main dispute in the case. 

The Examiner maintained a rejection using the BRI to essentially read out the "only." Some Examiners do not like the term because it really does make it difficult to form a good rejection if used properly. And here, the claim is quite clear that the information is displayed only so long as the press input is held down. To those unfamiliar with the unreasonable interpretations so common at the USPTO, it seems preposterous that such an issue would require a multi-year appeal delay. But for those of us familiar with USPTO practice, this is unfortunately par for the course. What is amazing here are the mental gyrations the Examiner used to justify the unreasonable interpretation. 

Specifically, the examiner used a classic approach of starting with the the claim language, then re-phrasing the language, and then interpreting the rephrased language to give an unreasonably broad interpretation. The Examiner first pointed to the specification to say that the claim wording actually should be understood as meaning that "the additional information only remains in cursor 303 as long as the modifier key or other key is held down." If you did not catch it, the Examiner effectively drops the "only" from the claim and moved it somewhere else so as to be ineffective. Then, from here, the Examiner re-interprets these modified words to mean that "the additional information is displayed as provided that a key is pressed or a command is executed." 

To paraphrase, the Examiner is interpreting words requiring a display only so long as the input is held down to mean the the display simply occurs provided that the key is pressed down. I.e., the "only so long as" is not referring to a temporal duration, but rather enabling the mere existence of the display. Once this nifty re-defining of the claim was complete, it was then easy to cite art that showed a display in response to a key being pressed down in combination with the remaining claim limitations. 

Of course, the Applicant disputed this approach as the prior art did not ensure that the display was present only so long as the input was pressed down. The Board agreed, citing in re Smith explicitly and quoting the very helpful guidance in that case. Because the specification was consistent with a reasonable reading of the claim language, the Examiner's unreasonable interpretation was rejected. In particular the Board pointed to the following description in the specification:

Thus, the user can indicate when he or she would like to see the additional information in cursor 303. In one embodiment, the additional information only remains in cursor 303 as long as the modifier key or other key is held down.

So, do not let examiners get away with unreasonable interpretations that are not supported by the claim language or the specification. If you have a case headed to appeal, do not forget to focus on this issue as you can win your case on this issue alone. The PTAB has shown that it will follow this binding precedent and hold examiners to more reasonable interpretations that are consistent with the specification.