While everyone knows that a key to arguing against a rejection is to focus on the claim language relative to the prior art, it is easier than one thinks to stray from this principle. In an attempt to get one’s point across to an examiner or PTAB judge, it can sometimes feel stronger to paraphrase or reword claim features to highlight differences from the cited art. However, whenever one finds themselves taking this approach, it is a red flag to stop and re-evaluate. Even large and sophisticated patent applicants fall into this trap as we see in a recent case from Lenovo. Appeal 2019-004838, Application 14/964,286.
The application relates to a method for location of a user input device relative to an input surface. Claim 1 on appeal is listed below:
1. A method, comprising:
determining, using a processor, a distance between a user input device and an input surface;identifying, responsive to determining that the distance is less than a predetermined distance and using the input surface, a cursor location on the input surface, wherein the cursor location corresponds to a tip of the user input device when the distance is less than the predetermined distance;
detecting, using a sensor, that the user input device has moved a predetermined distance from the input surface;
automatically switching, responsive to the detecting and without an additional user command, to another input mode, the another input mode using at least one other sensor to identify the cursor location when the distance is greater than the predetermined distance; and
identifying, using the another input mode, the cursor location.
Lenovo’s primary argument was that the cited art did not disclose the automatic switching to another mode when the input device moved more than the predetermined distance from the user device. Specifically, Lenovo argued that the reference teaches that where a stylus exceeds a threshold proximity distance from an input surface, the stylus’ scribing function is disabled and a non-stylus, non-scribing function, e.g., a camera, is enabled. Lenovo expanded on their point by emphasizing that the claims required something different:
There is some draw to what Lenovo says. Their claims are aimed at continuing stylus operation even at large distances, which is quite different than the cited art. None of the cited references really addressed the issues solved by Lenovo’s application. However, the way the argument was made, and the actual claim language, did not converge. Claim 1 says nothing about preserving stylus scribing functionality. The Examiner’s rejection used only the mode switch based on distance concept (forgetting that the mode switch was one that disabled writing) in combination with a secondary reference that changed sensors for a stylus in air writing mode as opposed to tablet writing mode. None of the references maintained the cursor location on the input device through a mode switch.
Both the Examiner and the PTAB relied on the lack of correlation between the arguments and claims to easily dismiss Lenovo’s arguments:
Appellant’s argument is not commensurate in scope with the claims which do not recite “preserv[ing] the stylus scribing functionality.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”).
So, when you find yourself making arguments that do not match the claim language, that is usually a sign. Maybe the argument is not framing the issues correctly, or maybe it is time to amend the claims to better match the argument.