"Determining" in Patent Claims

Some software inventions are defined in terms of “determining” something. That something might be a specific parameter, or whether or not a user input was received, for example.

One issue with claiming such determinations is the ease with which infringement is detectable. If one has to reverse engineer software to find or prove infringement, the claims may be less desirable. Of course, simply because it might be difficult to prove does not mean the claims are necessarily less valuable. Further, it is often possible to draft the claims in a way that infringement can be strongly inferred.

Assuming one gets past the detectability issue, the next concern is whether examiners at the USPTO will afford patentable weight to detecting limitations, or whether they might argue that merely because something is recognized to exist, it is therefore detected. While this might seem like an esoteric concern, in reality many examiners have taken such as stance.

Today we review a recent PTAB decision regarding signal processing in auditory prosthesis. Claim 1 is reproduced below from 15/073,867:


At issue was whether the cited reference (directed toward beamforming techniques) disclosed “determining” the claimed SNRs of the first and second signals, along with then comparing them for generating the stimulation. The examiner was of the opinion that the cited art, which did not explicitly disclose determining the claimed SNRs, anticipated the claimed elements because it disclosed “multiple array-processing stages to generate a directional sound signal by adaptively enhancing the sensitivity of one or more associated sensors to the desired sounds, essentially treating undesired sound as noise.” From this, the examiner reasoned that each of the sound signals from each of the audio sensors/transducers are sent through a processing state where the signal is enhanced and the SNR is adjusted. The cited art clearly did adjust the SNR of sound sensed from a desired direction. While it might be fun for philosophy students to debate whether a signal quality, such as SNR, must be determined to exist, the existential arguments seem to be a bit of a distraction from the nuts and bolts of patent prosecution and determining whether a reference shows a claimed element or not. Whether the SNR was inherently “determined” merely because the cited art recognized that the SNR existed and was affected was an issue to be determined by the PTAB.

Here, the PTAB addressed the issue rather succinctly:


This reasoning likely applies to most scenarios where an Examiner fails to give patentable weight to the determination itself and so it may be helpful to make clear when drafting, and prosecuting, that the claimed determinations are not met by the mere recognition of existence.