The Software IP Report
PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”
By Charles Bieneman
Categories: 35 U.S.C. § 112, 35 U.S.C. §§ 102, 103, The Claims Interpreted Report, The Software IP Report
Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpretation.” Moreover, the case shows applicants that, contrary to examiners’ admonitions that the specification will not be read into the claims, clear definitions in a specification should be given weight and can be used to overcome alleged “broadest reasonable interpretations.”
In In re Talwar, Appeal No. 2013-010521, Application no. 12/248,648 (PTAB Nov. 16, 2015), the Patent Trial and Appeal Board reversed a rejection under 35 U.S.C. § 102(e) because the examiner’s interpretation of the phrase “service level violation” went beyond the broadest reasonable interpretation. The rejected independent claim recited:
1. A method of cross-layer power management in a multi-layer system, the method comprising:
determining whether there is a service level violation for an application running on a hardware platform; and
controlling power consumption of the hardware platform in response to the service level violation.
The Specification stated that a “service level violation” occurred “when a threshold for a predetermined application metric is received. The thresholds are often described as performance goals in an agreement between a customer and a service provider, i.e., a service level agreement (SLA).” The PTAB concluded that
this passage clearly defines a service level violation as a threshold level for a metric that measures the performance of an application. We further conclude that the plain meaning of “violation” is that the threshold indicates an undesired condition, i.e., a failure to meet a goal for the metric. Therefore, we conclude the broadest reasonable interpretation of “service level violation,” in light of Appellants’ Specification, is a threshold for a predetermined application metric indicating a violation of (i.e., a failure to meet) a performance goal for the application metric.
The prior art did not “disclose controlling power consumption based on a determination of “service level violations,” as properly construed.” Instead, the prior art disclosed re-balancing a server load when power utilization exceeded a predetermined threshold. Its open-ended list of examples of a utilization metric all “relate[d] to utilization of server resources,” and “none relate[d] to application metrics or a failure to meet a performance goal measured by an application metric.” Therefore, once claim 1 was properly construed, the reference did not anticipate the claim.