Shooting yourself in the foot … digging your own grave … no patent practitioner wants to make arguments that can be characterized in this way. But the U.S. legal system (unlike some other legal systems) loves admissions. Whether it is an exception to the hearsay rule, or a discussion of prior art in the background, US patent applicants must be acutely aware that the USPTO takes full advantage of admissions wherever possible.
Consider how the USPTO can dismiss an applicant’s argument that a certain term in the claims is limited to a specific meaning. The USPTO does so by citing the applicant’s specification where the applicant has used the term in question inconsistently with the applicant’s desired meaning. While it seems obvious that the applicant must be careful and consistent, this issue arises often in prosecution and at the PTAB. Today we review a case from a sophisticated and prolific patent filer - Amazon.
The case is Appeal 2021-000970, Application 15/916,616. The application relates to the resource intensity of video encoders that encode video signals for transmission in a video stream. The claim on appeal is reproduced below and relates to adjusting the video encoding based on user predicted user attention.
Claim 1. A system, comprising:
[A.] one or more processors; and
[B.] memory to store computer-executable instructions that, if executed, cause the one or more processors to:
[i.] predict that a user attention would be drawn away from a first portion of a first video frame to a second portion of the first video frame due to a rate of change of objects portrayed in the second
portion relative to at least one previous video frame;
[ii.] encode the first portion of the first video frame at a lower quality level than the second portion of the first video frame in response to predicting that the user attention would be drawn away from the first portion to the second portion; and
[iii.] display the first and second encoded portions in a second video frame.
The case came down to the meaning of “predicting.” While the claim specifies predicting the user attention will be drawn away due to a rate of change of objects in different positions, the examiner relied on prior art that merely detected whether a rapid change is present in one or more frames of the video signal. In other words, the prior art cited by the examiner did not make a prediction (according to Amazon) because it was actually detecting a rapid change.
Namely, Amazon argued that the cited art, even if it detected a rapid change, did not make a prediction based on the detected rapid change. The examiner (and PTAB), found that Amazon’s own specification broadened predicting to include mere detecting. Specifically, the Office cited Paragraph [0022] of the specification, reproduced below.
In addition, the encoding adjustment application 116 may be executed to detect whether a rapid change is present in one or more frames of the video signal that is to be encoded. Such a rapid change may be predicted to draw the attention of the user to a region of the video frame where the rapid change is occurring, thereby inducing a saccade. In one embodiment, the encoding adjustment application 116 may compare frames of the video signal to previous frames of the video signal to ascertain whether a rapid change is present. In another embodiment, the encoding adjustment application 116 may be able to correlate frames of the video signal to a profile of the application 118 that indicates whether a rapid change is anticipated. In yet another embodiment, the encoding adjustment application 116 may obtain event indications from the application 118 that notify the encoding adjustment application 116 that a rapid change is anticipated
From there, it was easy to affirm the rejection (while the PTAB calls it an “aknowledgement” perhaps a better word would be “admission”):
We do not find Appellant’s argument to be persuasive because the first embodiment (“ascertain whether a rapid change is present”) of paragraph [0022]constitutes an acknowledgement by Appellant that the first embodiment of paragraph [0022] describes a “predicting” embodiment. We conclude that an artisan reading paragraph [0022] of the Specification would understand that Appellant is broadening the normal usage of “predicting” to include all three embodiments (not just the latter two “anticipating” embodiments).
. . .We conclude that based on Appellant’s broadening of the term “predicted” to include “ascertain whether a rapid change is present” (Spec. ¶ 22), the Examiner does not err in reading “predicting” to include “detecting.” We note that Appellant is not precluded from amending claim 1 to limit it to the argued “a rapid change is anticipated” embodiments of paragraph [0022] of the Specification.
So, it is critical that when arguing specific claim limitations as having a specific meaning, the applicant must ensure the specification does not broaden the meaning of those terms in a contradicting way. Here, Amazon was well aware of the issue and chose to pursue the appeal rather than amend the claim. Because there were arguably multiple ways to interpret the paragraph, that gave the Office enough wiggle room to affirm. When there is such wiggle room, often an amendment is a less risky way to clear the issue so that the applicant can present a stronger case on an eventual appeal.