A broadest reasonable interpretation asserted by the PTO cannot be inconsistent with proper operation of the embodiments disclosed in the specification. Here, for example, because the specification made clear that a new instruction must replace another instruction at the same memory location, it was unreasonable for the PTO to more broadly construe the claimed “overwriting” procedure as reading on any act of replacing some information in a computer file with new information. “Although claims are given their ‘broadest reasonable construction’ … that construction must be ‘consistent with the specification.’” This would be a good case to consult and cite in response to a broadest reasonable interpretation that conflicts with proper operation of the embodiments disclosed in the specification.
Background / Facts: The patent on appeal here from rejection at the PTO is directed to increasing the execution speed of Java-like programs—programs that use a virtual machine to interpret virtual machine instructions—by replacing some virtual machine instructions with native machine instructions. In this regard, the claims recite “overwriting” a selected virtual machine instruction with a new virtual machine instruction.
Issue(s): Whether, under the broadest reasonable interpretation rubric, “overwriting” should be construed in accordance with a more generic usage as the act of replacing some information in a computer file with new information, rather than literally writing over existing information.
Holding(s): No. “Although claims are given their ‘broadest reasonable construction’ on reexamination, that construction must be ‘consistent with the specification.’ [] Based on the clear language in the claims and the specification, ‘overwriting’ means ‘replacing information in a particular memory location with new information in that location.’” The court noted that, for proper operation of the embodiments described in the specification, “[t]he new go_native instruction replaces the old bytecode at the same location in memory so that the virtual machine will interpret the go_native instruction instead of the old bytecode. … While this replacement could occur either by actually writing over the existing information with the new information or by deleting the existing information and inserting the new information, the existing and new information must both appear in the same memory location.”