PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTAB Jan 19, 2017).

The subject patent application is drawn toward an ebook reader, and the claim language at issue was the following:

providing audio feedback based on a history corresponding to the page, in response to the page turning operation, wherein the history includes at least one of stored user input information and stored music audio playback information.

The specification describes that the user may save audio information, e.g., a user’s voice memo, on pages of an ebook.  The specification also describes that the user may turn pages of the ebook by a “page turning operation,” and the audio information is played “in response to the page turning operation.”

The claim was finally rejected as obvious under 35 U.S.C. § 103.  This primary reference taught that pages of an ebook may be turned with a “next page button” and a “previous page button,” i.e., a “page turning operation” as claimed.  However, this primary reference taught that sound events may be associated with certain text, and the sound event is triggered when the progress point of the reader traverses the text, e.g., when a cursor is hovered over the text.

In the Advisory Action, the Examiner advanced the argument that, “The sound event created by the reader and associated with the text is played when the reader is on a given page that the reader is currently reading.  The reader gets to the given page by pressing a next page button 320 or previous page button 322; therefore the audio feedback is clearly provided in response to a page turning operation.”  The Examiner furthered this argument in the Examiner’s Answer.

In agreeing with the Examiner’s § 103 rejection, the PTAB decided that it was reasonable to interpret the phrase “in response to” to mean “subsequent to.”  In other words, the claim limitation of “providing audio feedback…in response to the page turning operation” is satisfied by the primary reference’s teaching that a cursor may be hovered over text to hear associated audio subsequent to a separate, unrelated operation to turn to that page.  To support this conclusion, the PTAB stated that no definition of “in response to” was provided in the specification, and that the Appellant did not point to any inconsistency between the Examiner’s interpretation and specific text in the specification.

Lessons for Practice

Alternatives to the phrase “in response to” include “as a result of” “caused by,” and “based on.”  In this case, it appears that the Applicant intended “in response to” to be in a cause-and-effect relationship with the “audio feedback,” but the Examiner did not afford such weight to the phrase.  As a general comment aside from the facts of the case above, an interview with the Examiner is often useful in determining which specific wording will convey an intended cause-and-effect relationship to an Examiner.

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