"II. CLAIM STATUS

On August 21, 2012, the Examiner contacted the representative for Patent Owner by telephone to discuss the above amendment to claim 5. The Examiner explained his position that, under a broadest reasonable interpretation standard used in examination by the Patent Office to interpret patent claims during reexamination proceedings, the term "memory integrity test" could include both a test of memory and a test of data. The Examiner noted that the `737 specification does not expressly state a definition of the term "memory integrity test".

Patent Owner's representative respectfully submits that the broadest reasonable construction standard requires that patent claims must be read as a whole including both the claim preamble and the claim body, in view of the specification, and that when claim 5 is read in this light, the term "memory integrity test" most broadly relates to a test of the integrity of memory media and not at all to a test of data stored in the memory.

The claim 5 preamble recites:

5. A method for verifying the integrity of memory on a removable flash memory recording medium chip for use within a hand held recording device, such that the flash memory is suitable for recording voice messages, said method comprising the steps of A preamble has the import that the claim as a whole suggests for it.

See, response to final at page 7.

The claim 5 preamble phrase "such that the flash memory is suitable for recording voice messages" recites an intentional purpose that requires that "memory integrity test" be a media test so as to ensure that the "the flash memory is suitable for recording voice messages". See, response to final at pages 14-16.

Additionally, a claim preamble acts as a claim limitation where it requires a structural relationship between claim elements that addresses a problem described in the specification. The `737 specification identifies a defective memory problem and describes an embodiment that solves the defective memory problem by marking the memory medium so that the recorder skips defective media segments. The claim 5 preamble recites, "is suitable for recording voice messages", which sets forth a structural relationship between the "removable flash memory recording medium chip" and the "hand held device" that requires that the "memory integrity test" be a media test to solve the defective memory problem. See,
response at pages 16-18.

Therefore, Patent Owner respectfully submits that reading the language of claim 5 as a whole including both the claim preamble and the claim body, in light of the specification, the term "memory integrity test" most broadly relates to a test of the integrity of memory media and not at all to a test of data stored in the memory.

Consequently, Patent Owner respectfully traverses the broadest reasonable construction set forth by the Examiner. However, in the interest of advancing prosecution given the Examiner's version of the broadest reasonable construction, Patent Owner amends claim 5 to explicitly state in the body of claim 5 what Patent Owner believes already to be the broadest reasonable interpretation in view of the preamble of claim 5, which is that the test recited in claim 5 refers to a media test. This amendment is consistent with Patent Owner's interpretation of the claim before and after amendment. Confirmation of claim 5 is respectfully requested."

The appeal will be over this same arguement....

doni