Ex parte Givens

Informative decision only: persuasive authority, not binding precedent. When an applicant's specification does not expressly define a claim term but describes the term as a specific type of processing known in the art and sets out the mechanism and function implementing it, the Board will not give the term a broadest reasonable interpretation that sweeps in any generic filter. The term must be read in light of the specification and must give weight to each of its words, so a reference that lacks the specific element does not anticipate. No prior precedent directly addressed this issue in the text of the decision; the Board cites no earlier Board decision. For the examiner, the decision means that the absence of an express definition does not license reading a claim term as any generic adaptive filter. The examiner must construe the term in light of the specification and prove each element in the reference. For the applicant, a specification that describes the claim term as a known, specific technique and sets out the mechanism and function implementing it can defeat an overbroad reading and an anticipation rejection, even without a lexicographic definition. The Board relied on RCA Corp. v. Appl. Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984) for the rule that anticipation requires disclosure of each and every element. LEGAL TEST OR STANDARD: The Board gave the claim term its broadest reasonable interpretation as informed by Appellant's Specification. It rejected a reading that fails to give weight to each word of the term and deprives the words of their normal meaning. It then applied the anticipation rule that a reference must disclose each and every element of the claim. TRIGGERING FACTS: The claims recited a sub-band spectral subtractive routine external to an LMS-based adaptive noise canceller. The Examiner found that no specific definition was provided and read the term to include any adaptive filter. The Specification did not define the term but said such algorithms are known to those skilled in the art, set out the mechanism, and set out the function implementing the algorithm. Lin's LMS circuit output fed a summer, an additive circuit not described as operating on a sub-band. KEY QUOTE: "Any interpretation that fails to give weight to “sub-band,” “spectral,” “subtractive,” and “routine” deprives the words in this claim term of their normal meaning." (p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: When an examiner reads a term as a generic category because the specification lacks an express definition, cite the specification passages that describe the term as a specific known technique and set out its mechanism and function. Parse the term word by word, and show that the reference lacks the specific element.