Software Patents: How to Lose an Obviousness Argument

MARK TERRY, ESQ.

In Ex parte Kreiner, the Board affirmed an obviousness rejection involving software used in circuit design. The applicant argued that the cited reference described educational tutorial software rather than the claimed development environment.

The difficulty was that the asserted distinctions were not actually required by the claim language. The specification did not expressly narrow the disputed term enough to exclude the prior-art tutorial system, and the Board declined to import limitations from preferred embodiments into the claim.

The case became a claim-construction dispute. Although the applicant viewed a circuit-design package as fundamentally different from a tutorial, the claim was broad enough to encompass the examiner’s interpretation.

Practical takeaway: A patent applicant should not base an obviousness response on features that appear only in an embodiment or in counsel’s description of the invention. The limitations that make the invention distinct should be stated clearly in the claims or tied directly to an express definition in the specification.