This drawing comes from U.S. Patent No. 6,058,391. This drawing from that patent was at the center of an appeal to the Board in application 14/056,491. The attorney that handled this application was David D’Zurilla (Reg. No. 36,776), from the Schwegman law firm in Minneapolis, Minnesota. On a VERY high level, the claims in the application pertain to how data is stored in tables. The primary claim at issue on appeal looks like this:
What is remarkable about the appeal decision here is the Board’s willingness to step up and defend a software claim based on a plain language argument. The Board proves to be unwilling to interpret the prior art in the abstract manner proposed by the examiner. The decision is remarkable because, at least from our perspective, the USPTO has shot down tens of thousands of software patent applications where the language-claim mismatch was just as egregious. Let us show you what we mean.
The examiner in the appeal of the ‘491 application made an argument in relation to the table depicted above in the prior art FIG. 6B drawing. The examiner took the position that this drawing is evidence of “receiving a plurality of database tables from a plurality of different, independent third party clients in different industries.” The argument was that the different departments shown in the table correspond to different industries.
Attorney D’Zurilla responds to this argument by pointing out that the departments shown in the table of FIG. 6B come from a single company. The position taken is that departments within a single company are not in different industries, as claimed. This certain seems like a logical position. But we rarely see the USPTO be very friendly when an argument like this is made in a software patent application.
It is almost unbelievable but the Board decides to grant all claims. They affirm that position that departments within a company or not from different industries. Then, they simply say:
“We are constrained by the record and accordingly, we reverse the anticipation rejection of claims 1-7 and 9-20. Subsequently, we reverse the obviousness rejection of dependent claim 8 for the same reasons.”
Boom! All claims allowed. But what in the heck is going on here?! It is not the experience of the authors of this article to get such fair treatment from the USPTO on a language technicality in a software patent application. It seems like the Board is rebuking this examiner for not doing very good work. But what about the hundreds of times that I have argued in my software applications that the cited prior art does not show what the examiner argues is the same as what is plainly recited in my claim?