Language is a powerful tool for communication, enabling us to convey ideas, thoughts, and intentions. However, it is not without its limitations. The imprecision of language can lead to misunderstandings and disagreements, particularly evident in the realm of patent applications. As inventors strive to distinguish their inventions from prior art, arguments over the interpretation of language often take center stage, overshadowing the substantive aspects of the invention itself. Regrettably, this issue is often exacerbated by examiners who tend to prioritize the imprecision of language over the substance of prior art and the invention itself. This post delves into the challenges posed by language ambiguity in patent applications and how it can derail substantive arguments using a recent PTAB appeal by Disney. Appeal 2022-001989; SN 14/402,113.
There is power in words, and also pitfalls. In patent applications, the selection of words to describe an invention is critical. Precise and carefully chosen language is necessary to clearly articulate the novelty and distinctiveness of the invention. However, even with the best intentions, language can be subjective, open to different interpretations, and prone to ambiguity, particularly as words are isolated and analyzed individually. The nuances of terminology and phrasing can become focal points of contention, especially during interactions with examiners, shifting the focus away from the invention's true substance.
While examiners play a critical role in the patent application process, their tendency to concentrate on the imprecision of language can hinder substantive examination. Rather than delving into the technical merits of an invention and thoroughly assessing prior art, examiners may become ensnared in semantic debates. This shift in focus sidelines the substantive evaluation necessary for granting deserving patents. While the rules and regulations aim to provide some balance by requiring interpretations in light of the specification according to those skilled in the art, bureaucracy inevitably tips the scales away from substance.
In this way, debates over the meaning of terms and phrases in patent applications often overshadow the true substance of the invention. What should be a discussion about the uniqueness, technical advancements, and problem-solving aspects of the invention can devolve into semantic arguments. These arguments can become a distraction from the core goal of obtaining a well-deserved patent and can impede the progress of innovation.
USPTO examiners play a crucial role in the patent application process, reviewing applications and assessing the patentability of inventions. Their job is challenging to say the least, and they are open to criticism no matter how they proceed with examination, either as improperly withholding patent rights to a deserving inventor, or for failing to properly reject applications in view of the prior art and other requirements. However, the emphasis on interpreting language can sometimes lead to a disconnect. For example, while some examiners will provide guidance on how the language can be modified to avoid potential misinterpretation, many other examiners become fixated on debating the meaning of specific terms, losing sight of the overall technical merit of the invention.
To overcome the challenges associated with language imprecision in patent applications, a collaborative and proactive approach would save resources on both sides, and likely lead to improved patent quality. While inventors should continue to strive to provide comprehensive and detailed descriptions of their inventions, the USPTO should accept that it is virtually impossible to predict the prior art that will be applied, and the interpretation issues that will arise in prosecution many years in the future. Nevertheless, while examiners must consider various interpretations of claim terms to ensure a thorough examination, they can play a pivotal role by focusing on the substance and technical aspects of the invention and giving guidance on clarifying language rather than getting caught up in linguistic nuances.
Turning now to Disney’s recent appeal, the invention relates to a head mounted device
for virtual reality or augmented reality. Claim 21 on appeal is reproduced below:
21. A computer-mediated reality system comprising:
a user device; and
a viewing head mounted device configured to receive the user device when inserted into the viewing head mounted device, the viewing head mounted device including a viewing portal and a plurality of visual inputs selectable by a mechanical control element of the viewing head mounted device for manual operation by a user of the viewing head mounted device, wherein the mechanical control element is configured to display a selected one of the plurality of visual inputs within the viewing head mounted device when manually operated by the user, the viewing portal having a user side opening and a real-world side opening opposite to the user side opening, wherein the user side opening allows the user to look into the viewing head mounted device and see a real-world, in a line of sight of the user, through the real-world side opening;
the user device including:
a display;
a non-transitory memory storing an executable code;
a camera; and
a hardware processor executing the executable code to:
display, on the display, a computer-mediated reality content visible by the user through the viewing portal of the viewing head mounted device; receive, using the camera, the selected one of the plurality of visual inputs displayed within the viewing head mounted device using the mechanical control element without the mechanical control element contacting the display of the user device, in response to the user manually operating the mechanical control element of the viewing head mounted device; switch the user device from one of an augmented reality view and a virtual reality view to the other, in response to receiving the selected one of the plurality of visual inputs using the camera; wherein the viewing head mounted device is configured to receive the user device positioned such that the display of the user device is substantially parallel to the line of sight of the user seeing the real-world through the user side opening and the real-world side opening of the viewing portal, and wherein the display of the user device is not directly visible by the user when looking into the viewing head mounted device.
The prosecution of the case was rather long (5 RCEs) with the applicant attempting repeatedly to clarify the claims. The examiner relied on a combination of 5 references, but the primary issue on appeal was whether one of the secondary references (Han) disclosed a plurality of visual inputs selectable by a mechanical control element of the viewing head mounted device. Disney argued that Han disclosed an IR pattern in response to user input, and that “IR patterns are invisible, having wavelengths greater than the visible spectrum, and therefore are not ‘visual inputs.’”
The PTAB focused on the claim language of a visual input and found that it was broad enough to encompass Han’s IR pattern because IR is visible in a sense. Further, since the claims did not require that the input was visible to the user, and since the claim specifies that the inputs are received by the camera, the examiner was correct to rely on Han because one can use an IR camera to visualize IR patterns. Finally, even though the claim required displaying “.. content visible by the user”, this did not distinguish Han because it could be visible using the camera, not the human eye.
Disney also tried to explain that the whole point of the invention was to enable the user to provide visual inputs such as color, shade, etc., and that including an IR input makes no sense. However, once the PTAB determined that the language was broad enough to encompass IR, Disney’s arguments could be brushed aside. Whether Disney might still be able to further amend the claims to avoid the Office’s interpretation remains to be seen. Any claim amendment must be supported by the specification, and since it is virtually impossible to predict every examiner’s interpretation of claim terms, there may be little explicit support in the specification to remove an interpretation that was unanticipated.
While every patent professional can strive to write applications to maximize clarity, everyone should recognize the inherent imprecision of language as a significant hurdle that will always leave room for arguments in interpretation. And though it is the job of USPTO examiners to uncover potential ambiguities in the patent process,is paramount, arguments over interpretation should not overshadow substantive discussions. As inventors seek to distinguish their inventions, it is crucial to emphasize clarity, precision, and comprehensiveness in language choices. Likewise, examiners should prioritize understanding the underlying technical merits of an invention, offering constructive feedback to improve the patent application rather than engaging in debates over semantics, and then rejecting clarifying amendments as being unsupported. By shifting the focus back to substance, we can promote innovation and advance the field of intellectual property with greater efficiency and clarity.