Details in the Specification - Good or Bad?

Some applications are drafted with the strategy of being to the point, terse, and without extra detail that might unnecessarily limit claim scope. These are lofty goals and can help keep a broad interpretation during subsequent litigation. However, for any of that to be relevant you have to get the patent issued first.

As an example, sometimes applicants draft applications where they pick certain terms to describe a concept and then never vary from those terms in order to maintain consistency. This strategy works great if you are absolutely perfect in selecting your terms. But of course, predicting the future in terms of how the words will be interpreted by an Examiner and in terms of what the art will show is anything but perfectly predictable. As Helmuth von Moltke the Elder said, no battle plan survives first contact with the enemy.

A recent PTAB decision in an IBM case (13/654,220) illustrates the case where the term “local history data structure" was at issue. The Examiner asserted that this covered "a data structure containing any history, which is saved locally." IBM asserted that "local history data structure" is a "generally accepted and well known term" that a POSITA would understand it as "a history data structure that stores the identifiers of the content that was accessed by [a] browser over a period of time, which is saved locally." Whether or not IBM had the better position in reality, the claim wording was general and there was no support in the specification for IBM’s argument. Had their been support in the specification, IBM might have amended the claims during prosecution. Here, the PTAB was unconvinced that IBM’s definition applied, noting that IBM had provided no persuasive evidence to support its assertion. Further, the PTAB noted that IBM's written description did not explicitly define "local history data structure" in this manner as admitted in the Reply Brief that acknowledge "the present specification may not include an explicit statement of 'A local history data structure is X’".

It is often difficult to predict the details needed in an application many years in the future during prosecution (or litigation for that matter), but nevertheless there are ways to balance the inclusion of extra details and explanation while maintaining claim scope. However, for every example like this case, someone can point out another example where some extra language in the specification was used by a court to find non-infringement by limiting claim scope.

In some ways, the question comes down to whether it is better to make it to the world series (and possibly lose) than not make it to the play-offs at all in the name of drafting purity. The difference here is that, unlike sports, legal disputes can, and often do, settle.