Ex Parte Givens, Appeal 2009-003414 (BPAI, August 6, 2009)
While the application was decided over a year ago, the USPTO has decided to publish the decision as an informative opinion, presumably as an attempt to push back on the practice of applying a "broadest reasonable interpretation" too liberally.
The issue in this case is straightforward. Appellant filed an application on a method and apparatus for reducing noise associated with acoustic sensor outputs. During examination, the claims were rejected under § 102(e) over the Lin reference.
While the Appellant argued that Lin did not disclose a "sub-band spectral subtractive routine," the Examiner countered that Appellant did not provide a specific definition of “sub-band spectral subtractive routine” and thus, giving the term its broadest reasonable interpretation, included any adaptive filter.
The BPAI quickly shot down this reasoning:
We cannot agree [with the Examiner]. Appellant’s Specification explains that “sub-band spectral subtraction algorithms are . . . known to those skilled in the art” in paragraph , sets forth the sub-band spectral subtractive mechanism in paragraph , and also sets forth the function that implements the sub-band spectral noise reduction algorithm . . . Although Appellant’s Specification does not specifically define the term “sub-band spectral subtractive routine,” this is a specific claim term for a specific type of filtering (Spec. ¶). Any interpretation that fails to give weight to “sub-band,” “spectral,” “subtractive,” and “routine” deprives the words in this claim term of their normal meaning. Thus, the “sub-band spectral subtractive routine” does not include just any adaptive filter, but rather refers to a specific filtering routine. Further, the output from Lin’s LMS based adaption circuit is fed to a summer . . . not a sub-band spectral subtractive routine. A summer is an additive circuit and not a subtractive circuit. Also, Lin does not describe the summer as operating on a sub-band. Thus, because Lin does not disclose each and every element of Appellant’s invention, Lin does not anticipate claims 1-15.Read/download the opinion here (link)