Examiners will try every trick in the book to ignore words in a claim when those words are inconvenient to a rejection. One common approach is to try and redefine the intended meaning by relying on the BRI and/or other language in the specification. Examiners can be quite inventive in such approaches and thus it can be difficult to predict.
One particular trick used by examiners is to break a phrase down into individual words, and then assign broad meanings to each term in isolation or order to find a meaning broad enough to read on the prior art.
Another specific tactic is to look in the specification and try to find the Applicant’s explanation of certain features as a way to redefine the terms to mean something broader. This can be particularly problematic where an applicant uses “or” language in the specification in a way that multiple interpretations are possible (as BRI enables the examiner to always use the broadest, when desired). For example, sometimes the applicant is claiming a feature that was listed in the alternative. Consider an example where the specification explains that a user interface can display biometric information or facial features, and the applicant narrows the claims to specifically require “facial features” because the prior art shows something that could be categorized as biometric information. Here, the examiner goes to the specification to argue that facial features are biometric information because the specification equated them, and thus the prior art still applies.
A root of this problem is that in English, “or” phrases may be used to mean a true alternative. At the same time, “or” phrases can also be used to mean equivalency. Consider the following example:
such elements may be referred to as flow restrictors, or screens
A more precise statement would be: “such elements may be referred to as flow restrictors, and in some examples the flow restrictors may be screens.” But, because in English there are situations where “or” is used to indicate an equivalent, this opens the door for examiners to get away with mis- interpretation. While one may argue punctuation, sentence structure, etc., examiners typically ignore those pesky issues when they are inconvenient to the rejection.
An example is illustrated application 15/469,361, where Disney experienced such logic when trying to claim their invention related to a system for redirecting content after an interruption. Claim 1 required various limitations related to a frame location, including: “hardware processor configured to execute the content redirection software code to. . . track a playout status, including a frame location, of the primary content.”
The examiner relied on prior art that merely tracked a time position, but not a frame location. However, according to the examiner, the specification confirmed that the two were the same because the specification provided that the two were equivalents (emphasis added):
client systems . . . may enable a return to primary content 104 by resuming programming stream 118/218 at the playout pause point of primary content 104 substantially coinciding with the pause, i.e., the playout pause point substantially coinciding with an elapsed time location or frame location within programming stream 118/218 at the pause
So, does Applicant’s specification describing that the invention may use A or B, mean that A and B are equivalents, or does it mean that they are two distinct alternatives?
Here, the PTAB sided with Disney (internal citations omitted):
The claims recite the term “frame location.” See independent Claims 1, 8, and 15. The Examiner’s prima facie case omits the term “frame” so as to read the residual “location” on the prior art “position.” The Examiner finds the recitation: “track a playout status, including a frame location” reads on “a position” or “time position” in the video program, thus, improperly rendering the term “frame” superfluous.
So, be careful when using alternative language in the specification, such as “or”, so that the intended meaning is clear. Turning an alternative into an equivalent can spell big trouble during prosecution and beyond.