Incidental operation of a prior art element under only limited and contrived circumstances does not necessarily teach or suggest a claim element intentionally configured for such operation.
Background / Facts: The patent on appeal here from rejection during reexamination is directed to a memory transfer system in which, for a particular memory transfer request, the transfer is intentionally delayed by a specific, known amount of time. Because the memory controller will therefore know precisely when the data will be transferred on the bus, it can be prepared to receive it and can also more efficiently use the bus during the delay to perform other tasks. In effect, the prior art simply teaches certain processes that may cause delays in memory transfer, but the PTO found that under a broadest reasonable interpretation and in certain circumstances, those delays would be sufficiently isolated and therefore known to constitute the specific amount of delay claimed.
Issue(s): Whether a particular parameter that is known to cause a certain delay in outputting data to memory corresponds to the expressly claimed “value that is representative” of an amount of time to transpire after which the memory device outputs its data.
Holding(s): No. For at least the reason that the cited parameter is only “representative” of one source of delay among other factors, it “does not necessarily create a [given] delay before data is transferred due to further potential delay that may result.” That is, “[a] value cannot ‘represent’ an ‘amount of time’ if there are additional factors, wholly unrepresented by that value, that necessarily impact, or represent, the ‘amount of time.’ Certainly, [the cited parameter] is one factor that may affect the amount of time that passes before data is transferred but it does not represent that time.”