In the realm of patent prosecution, a crucial aspect is the interpretation of claim terms. The United States Patent and Trademark Office (USPTO) is tasked with the delicate responsibility of construing these terms broadly yet reasonably to strike a balance between providing protection to inventors and ensuring that prior art is properly considered. However, issues arise when the USPTO employs generic interpretations that encompass numerous species, even when they don't make sense within the broader context of the claim. This post aims to explore the importance of considering the usage of claim terms within the context of the entire claim and will illustrate this concern through a specific example involving the term "environment of a user."
One would think that the use of claim terms within the broader context of the claim is an essential aspect of determining the right interpretation. A reasonable interpretation should involve an analysis of the claim as a whole, taking into account the interaction between various elements. Such an approach can be contrasted with a narrow, rigid view of individual terms that does not consider how each term contributes to the overall function and scope of the invention. Even MPEP 2111 confirms that the context should be considered in citing Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004) (Ordinary, simple English words whose meaning is clear and unquestionable, absent any indication that their use in a particular context changes their meaning, are construed to mean exactly what they say.)
Unfortunately, the USPTO sometimes resorts to generic interpretations of claim terms to encompass a wide range of species, including the species in the prior art cited by the examiner, even when the context counsels otherwise.
Consider the recent PTAB decision in Appeal 2022-002875, Application 16/151,409. The invention relates to a personalized planning system. Claim 1 on appeal recites:
1. A personalized planning system, comprising:
a personalized planning module, comprising computer-executable code stored in nonvolatile memory;
a processor; and
a user interface; wherein the personalized planning module, the processor, and the user interface are configured to:
prompt a user to provide input data that includes biographical information and at least one user goal;
use neural network-based artificial intelligence to analyze the input data, wherein the neural network-based artificial intelligence includes cloud computing clusters performing
predictive analysis; and
provide output data via the user interface based on using neural network-based artificial intelligence to analyze the input data;
wherein the output data includes a user-specific customized plan;
wherein the user-specific customized plan includes a plurality of tasks;
wherein completion of the plurality of tasks by a user results in completion of the at least one user goal;
wherein using neural network-based artificial intelligence to analyze the input data includes identifying keywords in user- inputted answers to questions provided by the personalized planning system and identifying a user or a user environment by image recognition; and
wherein the personalized planning module includes a blockchain feature configured to reward a user with an award in the event of completion of one or more tasks of the plurality of tasks or the at least one user goal, wherein selection of the award and transmission of the award to the user is controlled by the personalized planning module without user intervention, the award being a cryptocurrency award
The issue in the case was the proper interpretation of the term "environment of a user." The examiner asserted the term was broad enough to encompass the food a user was planning to eat. The Applicant argued that under the ordinary and customary meaning of “environment” (a person’s physical surrounding), a person having ordinary skill in the art would not consider food a person’s physical surroundings. The PTAB disagreed:
Appellant does not define the term “environment” in the Specification. Therefore, as correctly stated by Appellant, we rely on the ordinary and customary meaning given to the term by those of ordinary skill in the art. “Environment” is defined as “the circumstances, objects, or conditions by which one is surrounded.” Applying this definition of “environment,” we agree with the Examiner’s finding that the food served to and eaten by a user is an object by which the user is surrounded. Consequently, we agree with the Examiner that a user’s food constitutes a “user environment” within the ordinary and customary meaning of “environment.” Thus, the Examiner had a reasonable basis to find that Daniel’s teaching of uploading a picture of a food item for identification by image recognition technology corresponds to the argued claim limitation of “identifying a user or a user environment by image recognition.”
Stepping back, the Office’s approach in broadly defining “environment” means that it encompasses any object in the surroundings of a user (under any situation), such as grass, ants, nitrogen gas, or even kitchen garbage. But the Office appears uninterested in whether those objects are reasonable in the context of the remaining claim elements and the specification. A dictionary definition of "environment" encompasses various aspects of surroundings, some of which may not be relevant to the user's experience in a virtual reality setting. Nonetheless, the USPTO uses this broad interpretation to argue that prior art includes elements that fall within this generic definition.
So, when arguing for the proper broad, yet reasonable, interpretation, consider pointing out the context of the claim term as part of the “reasonable” inquiry, especially the context of the term relative to other claim terms, and the specification. But, be aware the USPTO is likely to err on the side of breadth in interpretations, particularly when isolating terms in the claim from their context. Look out for ways in which the Office can use a broad dictionary definition to encompass the prior art and do not get caught off guard on appeal.