In the recent case of In re Blake Bookstaff , the CAFC reversed a decision by the Patent and Trial Appeal Board (Board) affirming a rejection under 102(b). Briefly, the invention here related to a point of sale device which received data indicative of a gratuity charged from the card issuer. Basically, a credit card reader that can print out not only the total sale amount but also the tip amount based upon data received from the credit card issuer.

The issue here was how to interpret the limitation “data that is indicated of a gratuity to be charged to the account associated with the card”. The PTO cited US 2005/0071232 to Frater which described a credit card reader that sends a total charge including the gratuity to the credit card issuer and prints out the total charge upon receiving approval from the credit card issuer. The Board asserted that because “the magnitute of the charge information indicates the amount of the gratuity included in the total when compared to the orginal bill” this is within the scope of the phrase “that is indicative of a gratuity to be charged.”  The Board also stated that because the claim included functional language the prior art only had to be capable of being operated to perform the claimed functions.

The inventor of course argued that Frater only described receiving data indicative of a gratuity from a customer rather than a credit card issuer as required in the claims. Further, the inventor argued that no reasonable person would conclude that a total value (the data returned by the Frater card issuer), which represents the sum of two smaller values (the original bill plus gratuity), can be characterized as indicative of one of those smaller values (the gratuity) where additional information (the original bill amount) is required to determine the two smaller values.

The CAFC determined that the construction of “data that is indicated of a gratuity to be charged to the account associated with the card” was contrary to the plain meaning of “indicative” which was used in the inventor’s specification. Particularly, the CAFC pointed out that it would be inconsistent with the plain meaning of the term “indicative” to conclude that a given value is “indicative” of another value where an entirely separate set of information, not transmitted by the card issuer, is necessary to determine that other value.

This case grabbed my attention because it is illustrative of a common occurrence at the PTO. Particularly, the PTO tends to make unreasonable interpretations of claim limitations while citing the “broadest reasonable interpretation…” standard. However, the office always ignores the remaining portions of this sentence “…consistent with the specification”. The PTO always brings up the fact that the inventor can amend the claims before the office in support of their position that their interpretations can be broad. However, such a statement ignores the recent realities of practice before the office. Namely, Examiners tend to unveil their unreasonable interpretations in Final Rejections. Thus, applicants have to spend significant funds to file an RCE to amend the claims. Moreover, some art units have as long as a two year waiting period for an Examiner to act on an RCE. I only hope that more decisions from the CAFC pointing out erroneous claim constructions by the Board can pressure the office to adopt interpretations of claim limitations consistent with the specification.