Earlier this week, I discussed a claim interpretation tactic of drawing a box around a group of devices to characterize the group as a single device. I would like to discuss another claim interpretation tactic.
An Applicant’s claim might recite:
“a network interface that receives user data, the user data including a name of a user and a device of the user; and
a processor that determines a user record, based on the user data.”
An Examiner might reject this claim over a combination of Reference A in view of Reference B. Reference A might describe a server that locates a database record, based on a mobile phone number of a user. Reference B might describe a server that receives a user name and a user device.
The Applicant might argue the combination of the references. For example, Reference A describes a determination based on a mobile phone number, not a determination based on user data including a name of a user and a device of the user. Further, even assuming Reference B describes user data, Reference B does not describe a determination based on the user name and the user device.
Typically, an Examiner will not find such arguments persuasive. An Applicant might assume the Examiner broadly interpreted the mobile phone number.
Actually, the Examiner probably interpreted the claim using the “pen cup” game. (This tactic has no real name. So, I named it according to a prop available in the offices of junior attorneys.)
The Examiner’s rejection is properly framed as relying on Reference A as describing locating a record, based on user data. The Examiner then modifies Reference A to include, within its user data, the name of the user and the device of the user, as described in Reference B.
The Examiner’s burden of showing obviousness probably is low: more information can lead to a better decision.
Crucially, the claim does not require the determination of the user record be based on the name of the user or the device of the user. Instead, Applicant’s claim recites only that the determination be based on user data.
Thus, the Examiner has no need to consider a determination based on the name of the user or the device of the user. The Examiner’s interpretation probably can be overcome by amending the claim to clarify this point.