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Wednesday, October 28, 2015

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AFFIRMED-IN-PART
Tech Center 2600 Communications
2641 Ex Parte Nguyen et al 12008599 - (D) GALLIGAN 102/103 102/103 FAY SHARPE/LUCENT ZEWARI, SAYED T

“As under the broadest [reasonable interpretation], the steps dependent on the ‘if’ [condition] would not be invoked, the Examiner was not required to find these limitations in the prior art in order to render the claims [anticipated].” Ex parte Katz, 2011 WL514314, 4 (BPAI 2011).

PTAB.US Sept 10, 2015:

AFFIRMED 
Tech Center 2600 Communications
2613 Ex Parte Thomas 12790673 - (D) FISHMAN dissenting THOMAS concurring KAISER 103 Kilpatrick Townsend & Stockton/Qualcomm BUTTRAM, ALAN T

See Ex parte Katz, 2011 WL 514314, at *4—5 (BPAI Jan. 27, 2011) (the broadest reasonable interpretation of a conditional step in a method claim includes instances in which the conditional step would not be invoked), reh 'g denied, 2011 WL 1211248, at *2 (BPAI Mar. 25, 2011)

 We are not persuaded the Examiner erred.  We begin our analysis by construing the steps reciting "responsive to" in claim 1.  Claim 1 recited two sets of steps each responsive to one of two mutually exclusive conditions. ... see also In re Johnston, 435 F..3d 1381, 1384 (Fed. Cir. 2006) ("optional elements do not narrow the claim because they can always be omitted.").  In particular, claim 1 recites steps to be performed "responsive to determining ... that the cursor is present in the input field" and steps responsive to determining the opposite condition (cursor not in the input field.) 
...
THOMAS dissenting

Regarding (a), the Majority first cites Ex parte Katz, a nonprecedential and thus non-binding opinion of our predecessor Board.  However, one final judgement cannot have any greater effect than any other final judgement. In any event, I believe Ex parte Katz does not support the Majority's position.


I do not believe In re Johnston supports the Majority's position.

Distinguishable from the present application, In re Johnston analyzed the linguistic precision of optional elements, i.e., the claimed "said wall may be smooth, corrugated, or profiled ...." and affirmed the Board's ruling that such limitations "did not narrow the scope of the claim because these limitations are stated in the permissive form 'may'" (see In re Johnston at 1384)(emphasis added).  The majority has not identified any similar permissive language in the present application and in any case, fails to point out precisely what they consider to be "optional" language in claim 1.  I believe the facts of In re Johnston highlights the concept of being "optional" when the claim language indicated that a limitation may be chosen and the Majority has not explained why the presently claimed responsive to steps are similarly optional, i.e., how the claim language signifies choosing between the different responsive to steps. 

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