BRI Is For Interpreting Claims, Not The Prior Art

January 28, 2021

Patent law has many rules that one might think overlap, but intertwining such things usually only leads to confusion. Even the Supreme Court gets caught mixing up issues as can be seen in the Section 101 decisions relating to whether claims contain an inventive concept, which is not to be confused with whether the claims are non-obvious under Section 103.

From a practical point of view, one particular area that both practitioners and examiners sometimes confuse is related to the issue of interpretation. As no language is precise (and even it if were writing with perfect precision is a goal rarely achieved), interpretation is something that happens every day in patent prosecution. One must interpret claims to properly derive their scope. One must also interpret the meaning of prior art disclosures to properly derive the state of the art. But these two tasks do not use the same interpretation rules, as the applicant learned in Application 14/264,850.

This case relates to a wearable earpiece having integrated footstep sensors. Claim 15, reproduced below, was appealed to the PTAB:

15. An earpiece module, comprising: an earpiece fitting adapted to be positioned within an ear of a subject; a power source; a processor; at least one footstep sensor configured to sense footstep information from an ear canal of the ear of the subject; and a sensor module integrated within the earpiece fitting, wherein the sensor module is coupled to the power source and the processor, wherein the sensor module comprises at least one optical emitter configured to direct optical energy to a region of the ear and at least one optical detector configured to sense absorbed, scattered, and/or reflected optical energy emanating from the ear region, and wherein the processor is configured to process signals produced by the at least one optical detector to produce processed signals containing physiological information of the subject.

The examiner combined two prior art references. The first had most of the limitations but did not disclose a foostep sensor. For that, the examiner relied on a secondary reference (Takiguchi). The applicant took issue with this because the secondary reference taught that the footstep sensor should be in the vicinity of the user’s body, and thus positioning the sensor in the ear canal is not in the vicinity of the user’s body. According to the applicant, the examiner was relying on the secondary reference disclosing a realm of locations where the sensor could be, and that realm did not include inside the ear canal because that was not in the “vicinity” of the user’s body. In particular, the applicant attacked the examiner’s interpretation as being unreasonably broad and not consistent with the specification - the rules related to what constitutes the Broadest Reasonable Interpretation.

The PTAB corrected the applicant’s theory and noted that interpretation of what a reference teaches is different than determining the broadest reasonable scope of a claim term (internal citations omitted):

Appellant premises this argument, in part, on an asserted broadest reasonable interpretation of “vicinity” as that term is employed by Takiguchi. The broadest reasonable interpretation is a standard used for construing claim language, not for assessing subject matter disclosed in a reference. When considering the prior art, a decision maker must consider what it teaches or fairly suggests to the skilled artisan. … Thus, the proper inquiry under § 103(a) with regard to Takiguchi’s use of the term “vicinity” is not whether “vicinity” is reasonably interpreted to include locations within the ear. Something along those lines might be required to establish anticipation based on Takiguchi alone, but not obviousness predicated on the combined teachings of Nielsen and Takiguchi. The more relevant question with regard to Takiguchi’s use of the term “vicinity” is whether Takiguchi’s disclosure in this regard teaches away from sensor placement internal to the ear, or if it does not rise to the level of teaching away, whether one skilled in the art would not have at least had a reasonable expectation of success in making the proposed combination in light of this teaching.

So, when there is an issue as to what a reference discloses, make sure to avoid presenting arguments that track the Broadest Reasonable Interpretation.

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