Wednesday, August 28, 2019

Why do words you think are clear become unclear in patent law?

Engineers understand that words have meanings. But as engineers, seeing the world through eyes that appreciate order and use context to derive clarity of meaning, the word games played by patent examiners can be frustrating.
Colt recently was forced to appeal examiner rejections based on word games that occur with surprising frequency at the US Patent Office. One of Colt’s patent applications was for systems and methods of providing information between one or more different battlefield participants. Specifically, the invention provided a sensor pack coupled to the at least one rifle accessory carrier that included a first sensor for determining a bearing of the rifle, a second sensor for determining an acceleration of the rifle and a rate gyroscope.
The patent examiner used a classic word-game approach where they take words out of context, re-interpret them using generic definitions of the terms to means something much more generic than in reality, and then reject the application using that overly-broad interpretation. Here, the patent examiner asserted that the prior art reference having an inclinometer was capable of use for determining a bearing of a rifle. While this is impractical from an engineering point of view, the examiner reasoned that "a bearing sensor is something that determines a direction[,] and an inclinometer broadly and reasonably determines a direction."
Of course this was nonsense, but Colt was forced through a years-long appeal. Colt argued that "a bearing sensor must measure a direction. This is DIFFERENT than an inclination. In short, teaching an inclinometer does not teach the claimed bearing sensor." Colt cited Merriam-Webster dictionary that defines an inclinometer as 'an instrument for indicating the inclination to the horizontal of an axis' and defines a bearing as 'the situation or horizontal direction of one point with respect to another or to the compass" (citing This was on top of the situation where Colt’s own application made clear that the example of its sensor 220 was merely one capable of determining a bearing of firearm such as a compass or part of a GPS device. At no time did Colt argue that their bearing sensor was so broad as to include an inclinometer.
The Board summarized the situation as follows:
Even assuming, arguendo, that an inclinometer is something that determines a direction in a very broad sense (i.e., inclination being a direction in a vertical plane), we are not convinced that one of ordinary skill in the art would consider Lupher's inclinometer 750 a sensor for determining a bearing (i.e., a direction in a horizontal plane, such as determined by a compass). In other words, finding a sensor that simply determines "a direction" is not sufficient; the claim does not recite merely a "direction sensor." Moreover, the Examiner does not point to any evidence of record to support the position that Lupher's inclinometer 750 and/or other motion detection circuitry 756 would be capable of determining a bearing. See Final Act. 3; Ans. 9.
In short, the Examiner's interpretation of the disputed "sensor for determining a bearing," recited in claims 12 and 16, as reading on Lupher's inclinometer 750 and/or other motion detection circuitry 756 is unreasonably broad, such that the rejection based upon this claim construction is in error. In particular, the Examiner has not established a finding supported by a preponderance of the evidence that Lupher, as relied upon in the rejection presented, discloses this disputed limitation.
While Colt was successful on this argument, it took great effort to persist and Colt ultimately lost their appeal on other grounds - as the examiner only needs to win one argument to sustain a rejection, even if they have numerous other improper rejection. The case was Serial No. 14/998,214.


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