Injecting common sense into obviousness

On February 15, 2013, the Court of Appeals for the Federal Circuit (CAFC) issued a decision in the case of In re Eric Jasinski (CAFC 2013) which reintroduces a little common sense into the patent process.  In the case, an Examiner issued a rejection.  The applicant appealed to the Board of Patent Appeals and Interferences (Board) which upheld the rejections.  At issues was a claim which read:

A method for verifying the accuracy of logical-to-physical mapping software designed for testing memory devices, said method comprising:

(a) providing a built-in self test (BIST) fail control function to generate multiple simulated memory fails at various predetermined locations within a memory array of a memory device;

(b) testing said memory array via a memory tester;

(c) generating a bit fail map by said logical-to-physical mapping software based on all memory fails indicated by said memory tester, wherein said bit fail map indicates physical locations of all fail memory locations derived by said logical-to-physical mapping software; and

(d) comparing said fail memory locations derived by said logical-to-physical mapping software to said various predetermined memory locations to verify the accuracy of said logical-to-physical mapping software.

Applicants argued that the limitation “to verify the accuracy of said logical-to-physical mapping software” should be given patentable weight.  However, both the Examiner and the Board stated that limitation recited an intended use and should not receive patentable weight.  Functional language is normally not considered in evaluating a claim limitation.

The CAFC agreed with the applicant.  In particular, the CAFC held “[n]ot only does the ‘to verify/verifying’ language refer to the ‘essence of the invention,’ it also provides the criteria by which the previously-recited comparing limitation is analyzed.  We thus conclude that the ‘to verify/verifying’ language is limiting.”

This would seem like common sense to most people.  However, the question of obviousness is somewhat modified in the evaluation process undertaken by Examiners (see “What does ‘obvious’ mean”).  My own opinion is that functional language (and dimensions, shapes, etc.) should be acceptable as long as such limitations are clearly defined and the Examiner is unable to find the limitations in the prior art.  I.e., as long as the functional language is truly a limitation, I see no reason to give it patentable weight.  This is how inventors and manufactures look at thiese elements, so I can’t think of a good reason for the USPTO to treat them differently.  Therefore, this decision is welcome news to those of us who believe that a little more common sense can be introduced into the Examination process.

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About Dustin Call (26 Posts)

Registered with the USPTO, first as a patent agent and then as a patent attorney, since April 10, 2006 and licensed in Washington as an attorney since November 16, 2006. I have worked for a large firm and now have a solo practice.


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