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[techlaw]

In a claim, I have used the term "proximate" and "approximately adjacent" to define the position of one feature with respect to another.  We can assume for the sake of this question that the "proximateness" of the features (i.e., when looked at in view of the layout of all other features of the device) defines an important distinction between the present inventon and the cited prior art.

I have an examiner who has told me that, in small devices, all of the features of the device are "proximate" and "approximately adjacent" to all other features of the device.  For this reason alone, he seems unwilling to allow such a claim limitation to be used to overcome the cited prior art.  I have never had an examiner take such a position.

The examiner's position seems to be at odds with common practice in patent drafting and prosecution.  That is, it seems that such terms as "proximate" are typically interpreted relative to the size and layout of the actual device which is being examined or cited, and not with respect to the size of all other objects in the universe.  Otherwise, why do we still bother using such limitations in claims?  Interesting.

Thanks in advance.

[khazzah]

I have an examiner who has told me that, in small devices, all of the features of the device are "proximate" and "approximately adjacent" to all other features of the device.  For this reason alone, he seems unwilling to allow such a claim limitation to be used to overcome the cited prior art.  I have never had an examiner take such a position.

I note you didn't actually ask a question :-)

I'd say you have a strong indication from the Examiner that he's not going to budge, no matter what.  As a practical matter, this leaves you with only a few options: call the Examiner's supervisor and discuss the issue with him; file a Notice of Appeal and then a Brief, thus forcing an Examiner "Conference" (ie, two other Examiners) to look at the issue; or amend the claims to make the Examiner happy. That's really about it.

If you're looking for a juicy snippet of case law that says "size-related terms are to be interpreted in relative to other claim terms and/or the spec rather than being understood as absolute" ... I'm pretty familiar with claim construction case law and I'm not aware of any such canon of claim construction.

 

[khazzah]

I have an examiner who has told me that, in small devices, all of the features of the device are "proximate" and "approximately adjacent" to all other features of the device. 
...
such terms as "proximate" are typically interpreted relative to the size and layout of the actual device

What if you amended to somehow recite this relativity? Sure, it might be clunky and inelegant. You might be philosophically opposed to amending for something which is already expressed implicitly in the claims. But if this relativity really *is* already implicitly in the claims, what does it hurt to make it explicit? Such an amendment might be one way to move your case forward.

[techlaw]

Thanks for the response, Karen. 

I guess I intended to ask whether the examiner's statement, taken by itself, is right or wrong from a strictly legal standpoint.  It seems way overreaching.  I've prosecuted my share of mechanical applications, and I have never come across such a blanket proposition. 

The examiner has actually acknowledged differences between the closest cited art and the invention as described in the spec.  We are pretty much just haggling over amended claim language at this point.  While recently discussing counter-proposals, he indicated that terms such as "proximate" are essentially meaningless because, "in small devices, everything is proximate to everything else."

As an open-minded and conscientious practitioner (ok, that might be overselling myself a bit  ), I want to remain sensitive to any shifts in law and trends effecting patent prosecution.  If the examiner is legally correct on this point, then it seems there would be no point in using such terms as "proximate" in claims for the purpose of defining the spatial relationship of two components or features (e.g., "A being proximate to B").  If the examiner is incorrect and I choose at some point to challenge his position, I prefer to be equipped with conclusive support for such a challenge (e.g., MPEP rules, case law, etc.).

As you have suggested, there are a number of ways to navigate around this issue.  But I was just curious as to what other practitioners and examiners may have to say about this examiner's statement from a purely legal standpoint.

Thanks again.

[Monkey1]

Have you looked at MPEP 2173.05(b) Relative Terminology?

[Isaac]

What is the difference between approximately adjacent and just adjacent.   I just cannot imagine what being 'almost right next to' might mean?

[khazzah]

What is the difference between approximately adjacent and just adjacent.   I just cannot imagine what being 'almost right next to' might mean?

Issac, you're saying that you view the term "adjacent" as being an absolute, and that qualifying an absolute makes no sense?

That seems too simplistic, since I'm sure I've run across the phrase "substantially all" in a claim -- yet isn't that a qualifier on an absolute?

FWIW, I know that some definitions of "adjacent" are not as narrow as you suggest. That is, adjacent doesn't not necessarily mean *right* next to.

For example, dictionary.com says adjacent means:
lying near, close, or contiguous; adjoining; neighboring:

[khazzah]

I guess I intended to ask whether the examiner's statement, taken by itself, is right or wrong from a strictly legal standpoint.  It seems way overreaching.  I've prosecuted my share of mechanical applications, and I have never come across such a blanket proposition. 

Ah. The Examiner's blanket statement ("everything is proximate when the device is small") is legally incorrect, because he's not taking into account the context of the claim and the spec. The context provided by the claims and spec would lead a POSITA to understand that "proximate" in a device that has a size on the order of 1mm means something different than "proximate" in a 1 m device.

As I said before, I don't know of case law that says "terms like proximate are to be interpreted relative to other claim term and the spec rather than in an absolute sense". I suppose the closest I can think of
is ACTV, Inc. v. Walt Disney Co.: "the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms". And of course, there's always Philips: "[T]he specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'"

[JimIvey]

The examiner's position seems to be at odds with common practice in patent drafting and prosecution.  That is, it seems that such terms as "proximate" are typically interpreted relative to the size and layout of the actual device which is being examined or cited, and not with respect to the size of all other objects in the universe.  Otherwise, why do we still bother using such limitations in claims? 

I don't.  Or, at least, I try not to.

My understanding is that "proximate" means "near."  How near must the things be for an accused device to infringe?  Preferably, that question should have a clear answer or, at best, your client will hand over large amounts of cash to litigators to resolve that issue.

I try to recite nearness or relationships in functional terms.  If proximity is important, it's probably important for a reason -- perhaps to avoid excessive disparity in the timing of signals from another element.  So, perhaps reciting something like that the two elements "are positioned relative to one another such that" the function is achieved.  Hopefully, your spec will support something like that.

Regards.

[JimIvey]

I guess I intended to ask whether the examiner's statement, taken by itself, is right or wrong from a strictly legal standpoint.  It seems way overreaching.  I've prosecuted my share of mechanical applications, and I have never come across such a blanket proposition. 

Ah. The Examiner's blanket statement ("everything is proximate when the device is small") is legally incorrect, because he's not taking into account the context of the claim and the spec. The context provided by the claims and spec would lead a POSITA to understand that "proximate" in a device that has a size on the order of 1mm means something different than "proximate" in a 1 m device.

As I said before, I don't know of case law that says "terms like proximate are to be interpreted relative to other claim term and the spec rather than in an absolute sense". I suppose the closest I can think of
is ACTV, Inc. v. Walt Disney Co.: "the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms". And of course, there's always Philips: "[T]he specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'"

I agree that the blanket statement that everything is "proximate" in small devices is not reasonable.  The claims and spec are interpreted by ordinarily skilled artisans of the relevant technology/ies.  Ask your typical engineer of small devices whether two elements at opposite ends of the device are "proximate" and I'd wager they'd say clearly not.  I've had some experience with examiners who don't like to be so limited by that particular aspect of US patent law, so I'm not surprised at your examiner's position.

However, if you can't readily answer the question "how proximate is 'proximate' for infringement?" from the claim itself (preferably) or from the entirety of the application, your claim will have problems.  Even if the examiner is wrong in her blanket assertion, you can ask the same typical engineer whether this or that element is proximate to that or this other element and eventually you might get an answer like "maybe" or "I don't know."  If that's likely, you'll want to fix that.

Regards.

[techlaw]

Thanks for all the responses. 

The present invention is somewhat elongated, with a first end and second end. The present feature in question is claimed as being proximate the first end, and is shown in the drawings as being almost immediately at the first end.  Whereas the corresponding feature in the cited prior art is located almost exactly between the two ends.

I agree with Jim's comments.  I don't typically rely heavily on words such as "proximate" in original claims to distinguish the invention from the prior art.  But when an examiner finds additional relevant art and proposes terms such as "at said first end" to overcome the art ("at" would arguably unduly narrow the claim, even in view of the prior art), my tendency is to counter with terms such as "proximate," "approximately adjacent," etc. 

In fairness to the examiner, and consistent with Jim's thinking, I would rather wrestle these issues out in prosecution than in litigation.

Thanks again for all the comments.

[Dazed-n-confused]

techlaw, is this decision in ex parte Frye of use to you?  It mostly made waves because of its impact on the idea of giving less (or no) deference to the findings of the Examiner during appeal, but the facts in that case are not too different from yours.  Except somewhat reversed. 

Frye claimed a shoe having a sole with an incline change about halfway along the length of the sole, while the Examiner applied art showing an incline change essentially at one end of the prior art shoe sole, under the toe.

Haven't tried applying this to your facts, but thought you might at least want to check it to see if any useful argument can be dragged from it.

http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd09006013.pdf

[Isaac]

Issac, you're saying that you view the term "adjacent" as being an absolute, and that qualifying an absolute makes no sense?

That seems too simplistic, since I'm sure I've run across the phrase "substantially all" in a claim -- yet isn't that a qualifier on an absolute?

For example, dictionary.com says adjacent means:
lying near, close, or contiguous; adjoining; neighboring:

I don't think qualifying an absolute is the problem, but I don't believe approximately adjacent has any meaning in this context.  Perhaps the problem is that adjacent already has a fuzzy meaning.  Can something be substantially approximate?

Given any of those definitions (with the possible exception of contiguous which seems unlikely to be intended here), what would 'approximately adjacent' mean.   Nearly  near?  Sorta neighboring?   Almost close?   What would be too far away to be near, but still approximately near? 

If something is adjacent can it also be approximately adjacent?   If something is just short of being adjacent to widget A, where is it?   

Unless there is some clarity added in the spec, I'd expect a 35 USC 112 2nd rejection on this particular construction.

[Jellothighs]

Unless there is some clarity added in the spec, I'd expect a 35 USC 112 2nd rejection on this particular construction.

It seems to me that the examiner doesn't think it's indefinite since "in small devices, all of the features of the device are "proximate" and "approximately adjacent" to all other features of the device" so the examiner probably won't give a 112 2nd.

I'm not sure I would give a 112 2nd for all uses of "adjacent" since that means the two objects are next to each other, which means to me, that there is nothing else in between.  However, I would consider a 112 2nd, should the claim say that a feature is adjacent to an end of an object.

I would argue "proximate" is even fuzzier.  For instance, if you have an elongated dinner table comprising a centerpiece at the center of the dinner table and a dinner plate at the end of the table, I would argue that the centerpiece is proximate the dinner plate. Heck I would argue that everything on the dinner table is proximate to each other.

[ChrisWhewell]

My read FWIW is that "proximate" is itself meaningless unless defined.   It is akin to the word "fast", without specifying just how fast, or relative to what...  Does its use in the claim satisfy sec. 112 for definiteness ?

As with all claims, they're to be read in the view of the spec.   As a first step, I'd comb the spec for indications of how "proximate" ought be interpreted in view thereof.   Same for the other terms, and take it from there.   Sometimes language like:  "sufficiently proximate for...." could be appropriate.