Wednesday, June 24, 2009

Software Per Se is Not a Statutory Class Of Invention

Ex parte Cristian Petculescu and Amir Netz
Decided: June 4, 2009

My apologies for the lack of postings. Although I still reviewed the decisions, I found a lot of the same rejections and arguments. That being said, I find this decision worth reporting on because the Applicants argued that software code in itself constitutes patentable subject matter under in Eolas Techs., Inc.v. Microsoft Corp. It should be no surprise that the Board disagrees.

The claims at issue were directed to automatically generating and building (automating the generating and building of) dimensional models utilizing simplified analysis heuristics. The application included both system and method claims.

Claim 1 recited:
A data analysis system, comprising:

an automated structure labeling system utilizing simplified analysis heuristics for automatically defining a dimensional model based on data interrelations from a relational data schema; and

an automated model building system for automatically constructing the dimensional model defined by the automated structure labeling system.

The Examiner rejected claim 1 and others under 101. The applicants argued using the old State Street standard. In addition they argued that the claims are directed to software code that in itself constitutes patentable subject matter as described in Eolas Techs., Inc. v. Microsoft Corp.

The Board dispensed the State Street arguments and then ran through the Bilski test to confirm the rejection of a number of the claims. When addressing the Eolas argument, the Board stated:
Appellants argue that all their claims are patentable as software code per se based on the Eolas
Techs., Inc. v. Microsoft Corp. case. Appellants, quoting a single sentence in Eolas, assert that Eolas stands for a new rule that software in itself is patent eligible. We do not agree – Appellants misconstrue Eolas.

Eolas states that “[w]ithout question, software code alone qualifies as an invention eligible for patenting under these categories, at least as processes.” Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1339 (Fed. Cir. 2005) (citing In re Alappat, 33 F.3d 1526 (Fed.Cir.1994); AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999) (abrogated by Bilski, 545 F.3d 943)). In particular, we note that the quoted language in Eolas is dicta within a discussion of “whether software code made in the United States and exported abroad is a ‘component[ ] of a patented invention’ under section 271(f).” Eolas, 399 F.3d at 1338-39.

Software in itself, with no structural tie to an article of manufacture, machine, process or composition of matter, is not patentable subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (A claim directed to computer instructions embodied in a signal is not statutory under 35 U.S.C. § 101). Cf. In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (a claim to a data structure stored on a computer readable medium that increases computer efficiency held statutory). Patentable subject matter must fall within one of the categories set out in § 101. See FN 4 (supra). “Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101….” Nuijten, 500 F.3d at 1359. Software (a data processing program) alone does not belong to one of those categories.
I, for one, am looking forward to hearing what the Supreme Court says regarding Bilski.

Thursday, May 28, 2009

National Law Journal Article Posted

If you haven't seen it already, I recently had an article published by the National Law Journal. The article is titled "Technology claims face high level of scrutiny". If you have a subscription to, please check it out.

Wednesday, May 20, 2009

Board Reverses Rejection of Beauregard Claim Based on Specification

Ex parte Stanley Bruce Holmstead and Jody L. Terrill
Decided: May 20, 2009

This decision, again, highlights how the specification can be used to ensure that a Beauregard claims survives a 101 challenge

The claims at issue were directed to a printer system for managing printable assets. The system could examine the content of the print job elements to determine (1) if the print job element(s) already exist in local memory, and (2) a location in the local memory to store the print job elements if any elements do not already exist in local memory.

Claim 10 is the Beauregard claim. It recites:

A computer-readable medium having stored thereon instructions that, when executed, direct a printer to:

receive a print job ticket that references one or more print job elements, each of the print job elements containing contents that enable generation of a printable document;

examine the contents of the one or more print job elements to determine if one or more of the print job elements is already present in a local memory of the printer; and

ascertain a location in the local memory of the printer to store any of the one or more print job elements that do not already exist in the local memory.
The Examiner rejected claim 10 using 101. The Examiner reasoned that “[t]he computer program product claimed is merely a set of instructions per se. Since the computer program is merely a set of instructions not embodied on a computer readable medium to realize the computer program functionality, the claimed subject matter is non-statutory.”

In response, the Applicants argued that claim 10 recited a computer-readable medium that was an article of manufacture—one of the statutory categories of subject matter under § 101. They also argues such a tangible computer-readable medium was deemed statutory by the Federal Circuit as well as MPEP § 2106.01.

The Panel reviewed the specification. They found the that it described examples of a computer-readable medium a ROM and/or firmware. The specification, with respect to firmware, stated that:
Printer 100 may include a firmware component 110 that is implemented as a permanent memory module stored on ROM 106. Firmware 110 is programmed and tested like software, and is distributed with printer 100. Firmware 100 can be implemented to coordinate operations of the hardware within printer 100 and contains programming constructs used to perform such operations.
The Panel began with providing definitions for a machine and a manufacture. As we have seen before, the definition of a machine comes from Nuitjen and is "is a concrete thing, consisting of parts, or of certain devices and combination of devices." The definition of a manufacture also comes from Nuitjen and is "(in its verb form) is defined as the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery."

Using these definitions, the Panel determined that in view of the specification the recited computer-readable medium fully comports with the definition of a “machine." Thus, the reversed the 101 rejection. Further, the Panel also determined that the computer-readable medium of claim 10 could be a “manufacture” under § 101 and therefore constitutes statutory subject matter for this additional reason.

Wednesday, May 13, 2009

Board Reverses 101 Rejection Using Machine Prong

Ex parte Andreas Myka and Christina Lindholm
Decided: May 13, 2009

In this decision, the Appellants were able to overcome a 101 rejection by "communicating" information between a master device and a slave device.

The claims at issue relate to bonding 'slave' devices, such as media capture devices, and instructing the devices to communicate captured media files with a specified set of metadata included.

Claim 14 recites:
A method for wireless bonding of devices and communicating media file transfer parameters, the method comprising:

monitoring, at a master device, an area of interest for the presence of potential bondable devices;

receiving, at the master device, a presence signal from a potential bondable device;

determining bond capability of the potential bondable device;

approving the potential bondable device as a bonded device; and

communicating, from the master device to the bonded device, media file transfer parameters, including definition of the media file metadata that is to be included with a captured media file.
Claim 24 recites:
A method for communicating media files and associated media file metadata from a bonded device to a master device, the method comprising:

bonding one or more slave devices to a master device according to predetermined media file transfer parameters communicated to the slave device from the master device; and

communicating a plurality of media files from the one or more bonded devices to the master device, the plurality of media files having metadata information as defined by the predetermined media file transfer parameters.
The Examiner originally rejected the claims under 101 using the "useful, concrete, and tangible result" test. The Board applied Bilski. Its entire analysis was:
The steps of claims 14 and 24 are performed by a master device or a bondable/bonded slave device. As argued by the Appellants, for example, the independent claims include 'communicating information between the master device and the bonded device.' Therefore, the methods recited in independent claims 14 and 24 are each tied to a particular machine or apparatus.
Result: 101 rejection reversed.

Tuesday, May 12, 2009

Claims That Are Tied to "Any and Every Possible Digital Computer" Run Afoul of 101

Ex parte John Synder
Decided: May 12, 2009

This panel appears to apply Bilski's machine-or-transform test to systems claims. Also, the reasoning on why the systems claims are not tied to a particular machine is quite interesting to me.

Synder's claims were directed to systems and method that provide a text to XML converter. Claims 1 and 19 arguably are "system" claims. Claim 14 is a process claim. They are pretty short, so they are reproduced here:

Claim 1. A text to XML transformer, comprising:

a transformer program having a plurality of compound statement [sic, statements]; and

a processor for executing the transformer program and converting an input text document into an XML document wherein the XML document does not contain every element that was in the input text.
Claim 14. A process for converting text to XML, comprising the steps of:

a) defining a transformer program having a plurality of compound statements, wherein one of the plurality
of compound statements contains a command that matches a regular expression and takes an action;

b) receiving a text stream;

c) executing the transformer program to convert the text stream into an XML stream.
Claim 19. A text to XML transformer, comprising:

a wizard for creating a transformer document;

the transformer document having a plurality of compound statements formed by a text to XML computer language; and

a processor for executing the transformer document and converting an input text document into an XML document.
The Examiner rejected each of these claims under 101. The Examiner reasoned that “[t]he claimed invention is directed to a transformer program (independent claims 1 and 14) or a transformer document (independent claim 19) that is executed by a processor.

The applicant argued, what I think many of us have thought, that “[s]oftware is just a way of temporarily wiring an electric circuit (computer) to perform a specific task. Electrical circuits are machines."

The Board's analysis with respect to claim 14 was their standard "no machine" and "no transform" of an article reasoning.

The more interesting Board analysis comes with respect to claims 1 and 19. The Board framed the issues as "whether the 'processor', alone or in combination with the program, is such that the claim as a whole defines a patent-eligible 'machine' under § 101."

This panel focused on the processor description in the specification. I think the decision is worth quoting here:
There does not appear to be anything special about the processor:
The XML transformer 10 has a processor 12 that executes a transformer program 14 that has a plurality of executable statements or script 15.
Spec. 5:4-6. The Specification does not disclose a new hardware design. The processor is not in means-plus-function format, but even if it was, the only structure shown is a block diagram of a processor that would include any and every possible processor for performing the functions.
In the end, the Board reasoned that because claims 1 and 19 cover any and every possible digital computer for executing the transformer program these claims fall outside the scope of 101.

Thursday, May 7, 2009

Thank You

I wanted to thank the followers of this blog who attended my webcast today on "Beating Bilski."

I hope you found it useful, informative, or at least worth the hour of your time.



Tuesday, May 5, 2009

DSL System Claim that Recites an Algorithm Beats 101

Ex parte Patrick Duvaut and Massimo Sorbara
Decided: April 28, 2009

My apologies for the delay in posting on this decision. My thanks go out to Aaron R. Fiegelson of the 12:01 Tuesday Blog for getting this decision out the day it was available.

At the outset, it is important to note that the claims at issue in this decision are system claims.

Claim 1 is representative:

Based on this, it's clear the board was dealing with a "system" that implements some mathematical function. More specifically, the claimed DSL system is "configured to" provide to provide the claimed power spectral density mask.

The Examiner rejected the claims under 101. The Examiner reasoned that claims 1-28 recite nothing more than a non-statutory mathematical algorithm or equation of a DSL communications system that has no practical application.

In first finding the claim was actual a system claim, the Board found the preamble limiting. Next, they relied on the specification to determine that a DSL system includes: (1) a remote ADSL Terminating Unit (ATU-R) in bi-directional DMT communication with the a central office ADSL Terminating Unit (ATU-C) or (2) a central office High Speed ADSL Terminating Unit (HSTU-C) in bi-directional DMT communication with a remote High Speed DSL Terminating Unit (HSTU-R).

Using this, the Board found that the claim was a system claim and thus within one of the four statutory categories.

Next, the Board reminded us that the mathematical algorithm exception to § 101 applies to true apparatus claims by citing Alappat. In reversing the Examiner's 101 rejection, the panel reasoned that:
The recited communications system is a particular machine that transmits data on a digital subscriber line. The claimed machine is, therefore, tailored to DSL applications. Moreover, the recited DSL communications system is programmed or configured to provide a PSD mask for spectral shaping a DBM mode downstream transmission defined by a specific equation. Thus, the recited DSL communication system is not a general purpose computer but a particular or special purpose machine.
In the end, it appears that the panel was convinced that claim 1 did not pre-exempt “the use of any apparatus employing the combination of mathematical calculations recited.” Said another way, it appears that the Board was impressed with the fact that claimed PSD could be used in other communications systems and applications. It appears that Board took the view that claims at issue only cover DSL systems.

Monday, April 27, 2009

A Computer System Claim Not Within 101

Ex parte Jonathan E. Greene
Decided: April 24, 2009

Although this isn't the first time that a panel has held an apparatus was not within the scope of 101, this decision caught my attention because it deals with the "mathematical algorithm" exception.

Greene's application was generally directed to methods and an apparatus that improve on existing Fast Fourier Transform (FFT) calculations. The claim 60 provides further details of the improvement. Dependent claim 61 also adds to the discussion. Both claims are reproduced below. Sorry, claim 60 is a bit long.

Claim 60. A computer system for performing a fast Fourier transform on N ordered inputs in n stages comprising:
one or more vector processors configured as a non-final stage calculating means for repetitively performing in-place butterfly calculations for n-1 stages;

the one or more vector processors further configured as a final stage calculating means for performing a final stage of butterfly calculations including:

a first loop means for performing a portion of the final stage butterfly calculations, the first loop means performing a set of butterfly calculations, and storing butterfly calculation outputs in shuffled order in place of the selected inputs to result in a correct ordering of transform outputs; and

a second loop means for performing a remaining portion of the final stage butterfly calculations, the second loop means performing two sets of butterfly calculations, and storing butterfly calculation outputs from a first one of the two sets of butterfly calculations in shuffled order in place of the inputs selected for a second one of the two sets of butterfly calculations and storing butterfly calculation outputs from the second one of the two sets of butterfly calculations in shuffled order in place of the inputs selected for the first one of the two sets of butterfly calculations to result in a correct ordering of transform outputs,

wherein the final stage calculating means performs all butterfly calculations as radix-4 butterflies having four inputs and four outputs, wherein N is a power of two, and wherein the non-final stage calculating means performs a first stage of radix-8 butterfly calculations followed by n-2 stages of radix-4 butterfly calculations,

wherein the computer system produces the correct ordering of transform outputs with no need to perform an additional bit-reversal ordering pass.

Claim 61. The computer system of claim 60, wherein the non-final and final stage calculating means include a four-fold single instruction multiple data (SIMD) processor for performing four radix-4 butterfly calculations at a time.

The Examiner rejected these claims under 101 using pre-Bilski analysis. Throughout the prosecution, the applicant argued that the claim was patent eligible because it was directed to a machine. For example, he argued that claim 60 “defines a computer system that includes specific hardware structures, namely, vector processors. Moreover, it defines those structures in connection with means, (implemented in software) namely, the first loop means, second loop means, non-final stage calculating means, and final stage calculating means that are implemented, in the specification, in software."

It its analysis, the panel recognized that these claims were distinguishable from the method or process claims considered by the court in Bilski. The panel found that the preamble of independent claim 60 positively recites a computer system which is supported in the language found in the body of the claim. As such, the panel determined the claimed “computer system” was an apparatus which executes a software program.

With that in mind, the panel phrased the question before them as: "whether the 'mathematical algorithm' exception applies to an apparatus claim where the practical result of granting such a claim would preempt substantially all uses of a fundamental principle."

As you can guess, the Board found the claim did not fall withing the scope of 101.

The Board that these claims merely implement an optimized Fast Fourier Transform on a conventional computer system that includes one or more conventional vector processors. As claimed, we find the transform output results of the FFT calculation are not used for any practical purpose or inventive application whatsoever.

Further, the Board reasoned that without the recited conventional hardware elements, Appellant’s claim would be non-statutory under 35 U.S.C. § 101 as being directed to an abstract idea and/or a fundamental principal (i.e., a mathematical algorithm). Therefore, the question that remains is whether drafting an invention in a different statutory category (i.e., as a conventional apparatus or machine) is all that is necessary to overcome a § 101 rejection of a pure mathematical algorithm, particularly in view of the Federal Circuit’s recent discussion of Benson, stating that a computer-implemented method is not patent-eligible if the mathematical algorithm has no other use than operating on a digital computer and would preempt the fundamental principle since all uses of the algorithm are still covered by the claim.

In the end, the Board stated that merely adding a nominal recitation of conventional computer hardware in a claim otherwise directed to a pure mathematical algorithm is merely an exercise in claim drafting that cannot, by itself, render the claim statutory. The panel also said that it was their reasoned view that to hold otherwise would exalt form over substance and the practical effect would be a patent on the mathematical algorithm itself. The Board also said that the purpose of 35 U.S.C. § 101 would be defeated if a patent applicant is able to evade a § 101 rejection of a pure mathematical algorithm by a nominal claim to structure.

Wednesday, April 22, 2009

New Poll Question

"Is the BPAI being consistent in their application of Bilski?"

Please vote to the right.

Tuesday, April 21, 2009

Webinar on Bilski Strategies

I am leading a web cast on May 7, 2009 that focuses on some strategies for dealing with Bilski.

Details can be found here: "Beating Bilski: Strategies for Protecting 'Process' and 'Software' Innovations, from the Celesq®-West IP Master Series (1938IP)"

A Busy Friday

Last Friday, April 17, 2009, Dale M. Shaw Chief Appeals Administrator, remanded six cases that had received Docketing Notices back to their respective Examiner.

Each of the decisions includes language similar to the following:
Claims X, Y, and Z of the instant application are set forth as method claims that may not fall with one of the four statutory categories of invention recited in 35 U.S.C. § 101. On May 15, 2008, the Deputy Commissioner for Patent Examining Policy, John J. Love, issued a memorandum entitled “Clarification of “Processes” under 35 U.S.C. § 101.” This memorandum is further used in conjunction with the Interim Guidelines and the Manual of Patent Examining Procedure § 2106.IV.B, when determining whether a claimed invention falls within a statutory category of invention. See In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(en banc). Thus, there is a question as to whether claims X, Y, and Z meet the requirements of being a patent eligible process under 35 U.S.C. § 101.
It is interesting to note that the decision do not make reference to the post-Bilski memo of January 7, 2009. The watchdog posted a link to this January memo here: Bilski Guidelines Post

Could this signal a new trend from the BPAI?

If you would like .pdfs of the decisions, feel free to email me and I will send them along.

Saturday, April 11, 2009

A Data Packet is Not Patentable

Ex parte Michael J. Pizzo et al.
Decided: March 23, 2009

Not surprising, the BPAI held a claim directed a data packet transmitted between two computer components was not patentable subject matter. The Board relied on Nuitjen.

Claim 57 of Pizzo's application recited:
A data packet transmitted between two or more computer components that facilitate database query registration, database change detection and database change notification comprising:

database query registration information, associated with a registered database query, stored in a queue, and employed to construct and transmit a change message utilized to route a database change notification.
The Examiner reject the claim under 101. The Board relied on Nuitjen and affirmed stating simply that:
Claim 57 is directed to a “data packet transmitted between two or more computer components.” We construe the “transmitted” data packet to encompass a signal which is not subject matter patentable under 35 U.S.C. § 101.
It should come as no surprise by now that unless your claim is directed to one of the four statutory categories the BPAI will take exception.

Processor "Operable" to Peform a Function Render a System Claim Indefinite

Ex parte Craig Prouse
Decided: March 19, 2009

The practice of claiming a structure and then reciting what it is "operable" to do in a system claim may need to be revised in light of the reasoning in this decision.

Prouse's appeal focused on overcoming a 102(b) rejection of certain pending claims. Claim 1 recited:
1. A system in an electronic device for emitting light from a light-emitting diode (LED) at a variable brightness, comprising:

a waveform generator for generating an LED signal waveform comprised of a plurality of LED signal values; and

a processing unit operable to determine a scaling value for one or more LED signal values in the plurality of LED signal values, wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness.
The BPAI stated that "speculation and conjecture must be utilized by us and by the artisan inasmuch as independent claim 1 on appeal does not adequately reflect what the disclosed invention is." In analyzing the claims, the Board compared the "processing unit operable to determine" against the method claim that positively recited determining the scaling values. They stated:
In direct contrast to the positive statement of determining in independent claim 9, a processing unit is merely recited in independent claim 1 to be “operable to determine a scaling value.” Thus, it is merely capable of performing the recited or desired function of determining a scaling value. In other words, there is no present tense, positively recited determination of a scaling value in claim 1. Thus, since the scaling values are not actually determined, they cannot be used to scale the LED values as recited in the claim. This situation clearly renders the entire subject matter of independent claim 1 and its respective dependent claims 5-8 indefinite within the second paragraph of 35 U.S.C. § 112.
In view of the above, the Board reversed the Examiner's anticipation rejection of claims 1 and 9 and those claims depending from the independent claims. However, the Board issued a new ground of rejection with respect to claim 1 under the second paragraph of 35 U.S.C. § 112.

Is it time to rethink the practice of claiming "circuitry operable" to perform a certain function?

Is there a difference if the circuitry were "configured to" perform that function?

Wednesday, April 8, 2009

Where's the 101 rejection?

Ex Parte Sudesh Kamath, Tyson Hom, and Allen Lee
Decided: March 18, 2009

This is the first decision from Technology Center 3600 to appear on the Watchdog. Technology Center 3600 deals with "Business Method" patents. I find it notable that there is no discussion of 101 and the Board did not issue a new 101 rejection. There is also some interesting discussion around "teaching away" that might be the subject of a later post.

The technology at issue is methods and systems for streamlining and simplifying the online ordering process while affording the customer and/or other authorized persons the convenience of modifying or canceling the order after the initial commitment to order the product has been made.

Claim 1 of the application at issue recites:
A computer-implemented method of processing an online purchase request from a customer to a vendor over a computer network, comprising the steps of:

receiving, over the computer network, a first online purchase request for a first item;

responsive to receiving the first online purchase request, providing a bifurcated order processing route that requests the customer to choose a first order processing route causing the first online purchase request to be processed according to an express processing procedure that requires no further input by the customer to execute the first online purchase request, the second order processing route causing the first online purchasing request to be placed in a shopping cart that allows one or more additional purchase requests for additional items to be placed therein, the second order processing route affording the customer an opportunity to cause execution of the first and any additional purchase requests placed in the shopping card to be processed according to the express ordering processing that requires no further input by the customer to execute, and

receiving from the customer a selection of the first order processing route or the second order processing route and processing the first online purchase request according to the customer’s selection.

The Examiner rejected this claim under 103. That was the issue on appeal. Surprisingly, there is no discussion of the "machine or transform" test.

I took a look at the application. Paragraph [0036] includes the following sentence: "[w]ithin the context of the present invention, a "shopping cart" is a metaphor for a software construct enabling a customer to aggregate his or her online purchases for immediate or a later purchase."

Based on some of the Board's previous decisions, doesn't such a definition raise some eyebrows?

Also interesting, when compared against some of the other Board decisions previously discussed, is Paragraph [0045], which states:
The present invention is related to the use of computing device 700 to process a customer purchase request. According to one embodiment, the processing may be carried out by one or more computing devices 700 in response to processor(s) 702 executing sequences of instructions contained in memory 704. Such instructions may be read into memory 704 from another computer-readable medium, such as data storage device 707 and/or from a remotely located server. Execution of the sequences of instructions contained in memory 704 causes processor(s) 702 to implement the functionality described above. In alternative embodiments, hard-wired circuitry may be used in place of or in combination with software instructions to implement the present invention. Thus, the present invention is not limited to any specific combination of hardware circuitry and software.

One could argue, that claim 1 could be directed to a "software" per se embodiment, which some panels have rejected under 101.

Also, what about previous Board decisions that used the guidelines set forth in MPEP § 2106(IV)(C)(2)(2)(a), that state claims must be amended to recite solely statutory subject matter?

Tuesday, March 24, 2009

Dictionary Definintion of "Continously" Applied to Reverse Rejection

Ex Parte Timothy James Collin et al.
Decided: March 13, 2009

I find this decision interesting because the BPAI applied a dictionary definition for the term "continuously" because the applicant did not define that term in the specification. Also, I was happily surprised that there were no new grounds of rejection based on either Bilski or Nuitjen.

The subject matter of the Collins application was directed to a method and device for transmitting data on a channel within a given power range. The method and device begin transmitting data when a first condition has been met, such as a power level, a synchronization pulse, or a pseudo-random pause. The transmission stops when the power falls below the first power threshold or exceeds a second power threshold level.

Claim 1 of the application recited:
A method comprising the steps of:

receiving a carrier signal;

continuously monitoring the carrier signal for a first predetermined condition;

selecting a channel and continuously transmitting data on the selected channel if the first predetermined condition is satisfied and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition; and

ceasing the transmitting of the data on the selected channel if the second predetermined condition is satisfied during the transmitting of the data on the selected channel, wherein the first predetermined condition is satisfied based on one of, when a received power level exceeds a first threshold and a synchronization signal, and the second predetermined condition is satisfied based on the received power level.
The claims were rejected under 103. The term at issue was "continuously." The specification was silent as to the terms meaning. As a result, the Board referred to Merriam-Webster's Online Dictionary and defined "continuous" as "marked by uninterrupted extension in space, time or sequence." Using this definition, the Board determined that cited references did not teach "continuously transmitting data on the selected channel . . . and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition."

The Examiner had argued that the applicants narrowly construed the term “continuously." The Examiner found that a reference that repeated a loop pattern, when no acknowledgement was received, read on the above limitation. The Board disagreed and stated the reference included a delay period when no data is being transmitting within each loop, and thus the above limitation was not present. The Board also found another delay in the teachings of the reference.

Much to my surprise, there was no Bilski or Nuitjen analysis applied to the method claim.

Claim 6 was a system claim having elements such as:
a receiver for receiving a carrier signal;

a monitor ... for continuously monitoring the carrier signal;

a storage medium having data stored therein; and

a transmitter ...
The Board overturned the rejection of this claim using the same analysis above with respect to the term "continuously."

Again, there was no Nuitjen analysis. Also, there was no discussion of "storage medium." The specification did not define storage medium and we have seen the board apply both statutory and non-statutory definitions to this term on different occasions.

Congrats to the Applicants are in order.

New Poll Question

The new poll question is: "Will there be an en banc review of the Tafas decision?"

You can cast your vote on the right.

Tuesday, March 17, 2009


To date, most of the focus on this blog has been on Bilski and 101. I thought it would be helpful to provide some insight into some other areas of interest at the BPAI. To get moving in that direction, I am happy to provide the first ever "guest post" on BPAI Watchdog. As the title shows, the focus of this post is obviousness (a.k.a. as 103).
The following post is by Jason D. Eisenberg. Jason is an associate at Sterne, Kessler, Goldstein & Fox, P.L.L.C.. This post contains content from a longer article on this subject, published March 11, 2009 by Law360. You can read that full article here.

The Supreme Court’s KSR v. Teleflex, 550 U.S. 398 (2007) decision dramatically impacted examination of patent applications by the U.S. Patent and Trademark Office. In our article, we outline the best way to structure an appeal to the Board of Patent Appeals and Interferences. In response to the KSR decision, patent examiners are increasingly denying patents asserting the protection sought is “obvious.” The increase in the number of rejections has led applicants to increasingly appeal the patent examiner's decisions to the Board.

As an example, the PTO reported the Board received about 6,385 ex parte appeals in the fiscal year 2008, almost double the 3,349 filed in fiscal year 2006, and concluding two consecutive years of 35% increases in appeals. The PTO reported that almost 950 ex parte appeals were filed per month at the Board since September 1, 2008. With this increasing workload, success at the Board requires careful groundwork in prosecuting the application and thoughtfully building the record for the appeal brief.

Over 200 post-KSR Board decisions that reversed the patent examiner were reviewed. Of these, emphasis was placed on the nearly 100 decisions in which the Board reversed the patent examiners’ finding of obviousness in the internet, software, circuits, and mechanical technologies (i.e., Technology Centers 2100, 2500, 2600, 2800, 3600, and 3700).

It was observed that a small group of 7-10 administrative patent judges appeared on many of the Board decisions reversing obvious rejections in the predictable arts.

In this post-KSR world, applicants have obtained reversals of the patent examiners rejections in only 25% of appeals in the predictable arts. The Board has provided glimpses into what the appellant needs to present to successfully challenge the patent examiner.

Successful appellants have proven factual errors including claim and reference interpretation errors. Similarly, successful appellants have proven legal errors including (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application. Finally, successful appellants included (a) thoughtful definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness. However, even if successful in overcoming the patent examiner’s rejection, appellants must consider the chance the Board will assert sua sponte rejections for claims that (i) do not recite patentable subject matter, (ii) are indefinite Hybrid claims reciting two statutory classes, (ii) lack enablement, and (iii) lack written description even for patentable claim features added in amendments during prosecution.

An applicant should appeal when properly interpreted claim language recites features that distinguish over properly applied references. In the heat of prosecution, Applicants sometimes lose sight that the pending claims need to clearly recite what is argued. If the pending claims can be amended to better support the arguments, a request for continued examination should be filed with claim amendments instead of an appeal. However, if the applicant believes that the invention has been optimally claimed and that the claims are distinguishable over the applied references, continuing prosecution is usually an inefficient use of resources. Rather, appealing the application is necessary.

Take Aways

Appeal to the Board is worthwhile since after successful appeal to the Board 80% of applications issue as patents.
  • Factual errors include claim and reference misinterpretations by the patent examiner.
  • Legal errors include (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application.
  • Success on appeals can increase when appellants include (a) definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness.
  • Appellants must balance success on appeal with the risk of narrow claim interpretations and sue sponte rejections for claiming non-patentable subject matter or amended claims that, although allowable over art, fail written description requirements.
  • In the end, Appealing final rejections from "hard-line" patent examiners may be an applicant’s only chance for reversing improper obviousness rejections to obtain an allowance for their application.

The views expressed here are those of the author, and should not be attributed to Sterne, Kessler, Goldstein & Fox P.L.L.C., or to any of its present or former clients.

Monday, March 16, 2009

Applicant defines herself out of the realm of 101

Ex Parte Daniela Giacchetti
Decided: March 11, 2009

This decision continues the BPAI string of 101 rejections where the claims can cover both statutory and nonstatutory subject matter.

The claim at issue in this decision recited:
1. A method of enabling display of a simulated facial image, the method comprising:
[1] facilitating display,
  • on a display device,
  • of a plurality of templates,
  • wherein at least some of the templates are representative of a portion of a face having a simulation of use of a beauty product;
[2] enabling selection of at least one of the displayed templates; and

[3] facilitating display,
  • on the display device,
  • of a simulated facial image
  • including at least one displayed facial portion having a simulation of use of a beauty product,
  • wherein the displayed facial portion having a simulation of the simulated facial image corresponds to a facial portion of the at least one selected template, and
  • wherein the simulation of the displayed facial portion corresponds to a simulation of the at least one selected template.
The applicant provided the following discussion in her specification regarding certain words in the claims.
Enabling the image to be displayed may be accomplished in one or more of a variety of direct and indirect ways, including directly displaying the image on a display device, providing access to software that facilitates display, providing network access which enables display of the image on a user-controlled device, providing a dedicated use device, or cooperating with an entity who either directly displays the image or who helps the user to display the image.

As with the definition of "enabling display" above, the term "applying" and "selecting" are also to be interpreted as including direct and indirect actions, such as, for example, providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in applying and selecting.
The Examiner rejected this claim and those that depended from it as failing under 101. The Examiner reason, based on the above definitions, that the method steps of facilitating display and enabling selection did not require the actual display or selection step to be performed. Thus they could be understood as merely having an idea about how to arrange the selection of the information.

During the appeal, the applicant argued that the reference to direct activities made the claim statutory.

Not surprising, the Board agreed with the Examiner and confirmed the 101 rejection. They explained that during examination claims are given their broadest reasonable construction that is consistent with the specification. Relying on the above passages, the Board agreed that the applicant acted as her own lexicographer. They determined that the limitations of enabling and facilitating in the three steps of claim 1 to include indirect activity such as providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in what is enabled or facilitated. The BPAI concluded that broadest reasonable construction would not necessarily include that performance within the scope of the three steps in claim 1.

Using these definitions, the BPAI applied Bilski's machine or transform test. Their analysis stated that:
[t]hese process claims recite a series of process steps that are not necessarily tied in any manner to a machine, because the scope of the steps also reach activities that do no more than provide some access or aid. In other words, these claims do not limit the process steps to any specific machine or apparatus. Thus, the claims fail the first branch of the machine-or-transformation test because they are not tied to a particular machine or apparatus. The steps of these process claims also fail the second branch of the machine-or-transformation test because nothing must be transformed, not even data, when the steps are construed as encompassing no more than providing access or aiding. Thus, the process of claim 1 fails the machine-or-transformation test and is not patent-eligible under 35 U.S.C. § 101.

Poll Results

The BPAI Watchdog's first poll question was: "Are the BPAI and the PTO abusing Bilski?"

84% of those who responded said they were.

Thursday, March 5, 2009

BPAI Remains Split on "Computer-Readable Medium"

Ex Parte Scott Alan Isaacson, Stephen R. Carter and Frank Allan Nutt
Decided: February 26, 2009

This decision, also from Technology Center 2100, continues on the Ex parte Mitchell path. The Board determined that "medium" when modified by "computer-readable" is not limited to only tangible embodiments.

The claims of the Isaacson et al. application were directed to for assembling or otherwise aggregating electronic identities. Representative claim 1 recited:
[a] method implemented in a computer-readable medium to aggregate an identity, comprising:

accessing one or more identity authorities and one or more identity stores with a schema to acquire identifiers and attributes associated with the aggregated identity, wherein the identifiers are information used to identify the identity; and

assembling the acquired identifiers and attributes to aggregate the identity.
Also, the preamble of independent claim 9 recited a “data store implemented in a computer-readable medium, residing in a computer-accessible medium.” Likewise, the preamble of independent claim 16 recited a “schema data structure used to aggregate an identity and implemented in a computer accessible medium.” Finally, the preamble of independent claim 22 recited a “system implemented in a computer-readable medium.”

Arguably, the specification did not include an express definition of "computer-readable medium." However, the specification included the following:
[o]f course, the invention can be implemented in a variety of applications, systems, schema conventions, programming languages, and data formats. Additionally, the invention is not limited to any particular network. Thus, any hardwired (direct or indirect), or wireless network can be used.

FIG. 1 is a flowchart representing one method 100 to aggregate an identity, according to one embodiment of the invention. The method is implemented in an electronic environment on a network. The network can be, without limitation, a Local Area Network (LAN), a Wide Area Network (WAN), or a combination of LANs and WANs interfaced together. Furthermore, as mentioned above, the network can be hardwired or wireless.
The examiner rejected all the claims under 101.

During prosecution, Isaacson et al. added the "implemented in a computer-readable medium" type limitations to the preamble. Also, they argued that those amendments recite structure and indicate that the claims are limited to computer implemented embodiments.

The Board discussed the limitations in the preambles. They said that:
to the extent that the preamble has any bearing upon the broad recitations in the body of representative independent claim 1 on appeal, the subject matter also appears to be proscribed by the reasoning in In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). The broadly claimed “medium” in the preambles of all independent claims on appeal is not necessarily required to be embodied in a tangible computer-readable medium. Indeed, the subject matter is so broadly disclosed that there is no discussion of what the claimed “medium” is supposed to be or otherwise be comprised of in the Specification as filed. As such, the medium appears to be a broadly definable wireless network that encompasses signals per se proscribed by Nuijten ...

Additionally, based upon the analysis in the previous and this paragraph at least, the data store broadly recited in the preamble of independent claim 9 is not positively stated to be embodied in a tangible device conventional in the arts since it is merely recited to be “implemented in a computer-readable medium, residing in a computer-accessible medium.” A similar observation is appropriate for the schema data structure of independent claim 16. We are not aware of any authority which permits the direct claiming alone of a data structure per se. With respect to the system of claim 22, it is not necessarily recited to be a tangible computer system since all the recited elements are inclusive of non-tangible embodiments or abstract concepts as already discussed with respect to independent claims 1, 9, and 16.

Wednesday, March 4, 2009

BPAI Confirms 101 Rejection of Method, Beauregard, and System Claim

Ex parte Nick M. Mitchell and Gary S. Sevitsky
Decided: February 23, 2009

This decision is interesting because the Board broadly applied Bilski to reject not only method claims, but also Beauregard and system claims. Also, the decision appears to conflict with aspects Ex parte Mazzara (see previous posting) regarding the BPAI's view of a "computer readable medium."

The claims of this appeal were directed to diagnosing memory leaks. The representative claims at issue on appeal included a method claim, a Beauregard claim, and a system claim. The Examiner rejected each of the claims under 101. The claims recite:
1. A method for identifying co-evolving regions in the memory of a target application, comprising:

receiving information identifying a set of data structures that are evolving; and

classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.

10. A computer readable medium for identifying co-evolving regions in the memory of a target application, comprising instructions for:

receiving information identifying a set of data structures that are evolving; and

classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.

11. An information processing system comprising:

a processor comprising logic for performing instructions of:
  • identifying a set of data structures that are evolving; and
  • classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner; and
a memory for storing the instructions.
The Board began their 101 analysis with the method claim and applied the "machine-or-transformation test.” In an attempt to pass the "machine" part of the test, the applicants argued that claim 1 was “clearly computer-implemented,” based on the allegation that the preamble “recites a memory wherein the co-evolving regions are identified.” The Board didn't buy it. They responded with:
[w]e find nothing in the steps of claim 1 that are specific to a computer. Nor do we find that the recitation of a “memory” in the preamble serves as antecedent for anything in the body of the claim, other than, inferentially, may evidence intent that the “memory” might contain the set of data structures that relate to “information” that is gathered and received in some unspecified manner.

The Board quickly addressed the "transformation" prong by finding that claim 1 did not require any kind of electronic transformation of data into a different state or thing.

The BPAI next addressed the Beauregard claim. As expected, the applicants argued that claim 10 was directed to the “manufacture” class of statutory subject matter as set forth in § 101. In response, the Board said that:
[a]lthough a “computer readable medium” may nominally fall within the statutory class of “manufacture,” claim 10 would effectively pre-empt the abstract idea represented by instant claim 1.
The Board's footnote discussing "manufacture" is interesting. The footnote states:
[a] computer readable “medium” that comprises “instructions” as recited in claim 10 does not necessarily fall within any statutory class. A computer, properly equipped, can receive instructions via electronic data transmission over a wired network or over the air. However, a carrier wave or signal does not fall within any of the four categories of statutory subject matter, and is thus not statutory subject matter. See In re Nuijten, 500 F.3d at 1357.
The panel in Ex parte Mazzara, decided on February 5, 2009, is in opposition with the above reasoning. The Mazzara panel found that the term "computer usable medium", when not defined in the specification, was limited to only tangible manufactures. The Mazzara panel relied on the the fact that there was no express statement in the Specification, nor any other indication in the record, that the term "computer usable medium" was intended to include non-statutory subject matter such as signals or paper. (Note that Technology Center 2600 decided Mazzara and Technology Center 2100 decided Mitchell)

In addressing system claim 11, the Board acknowledge that on its face the claim appeared directed at patentable subject matter (e.g., a “machine”). Despite this, the Board found that the claim was not 101 eligible. They reasoned that:
[t]he use of a “processor” and “memory” for storing and performing the broadly recited “instructions” of claim 11 would be, in practical effect, a patent on the abstract idea of “identifying” and “classifying constituents” of data structures as recited. Limiting the claim to part of a system comprising a “processor” and “memory” does not add any practical limitation to the scope of the claim. Similar to a field-of-use limitation in a process claim, the use of a general “processor” and “memory” is insufficient to render an otherwise ineligible claim patent eligible. See Bilski, 545 F.3d at 957

Transforming Digital Content Does Not Pass Bilski's Transformation Test

Ex parte Taiga Nakamura, Ryuki Tachibana, Suichi Shimizu, and Seiji Kobayashi
Decided: February 18, 2009

This decision interests me because it sheds a little light on how the BPAI views the "transform" prong of the Bilski analysis.

The Nakamura et al. application included claims directed to a system, method, and computer readable medium for providing an electronic watermarking technique that is used to detect whether digital content has been copied or altered. The Examiner had not issued a 101 rejection during prosecution. The BPAI added a 101 rejection at the end of their decision.

Claim 16 and Claim 18 were the focus of the Appeal and stated, respectively:

16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of:

generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and

synthesizing said additional information and content data for said digital content; and

wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.

18. An additional content detection method, for detecting additional information added to a digital content in order to determine whether said digital content has been processed, comprising the steps of:

detecting, from content data for digital content, multiple sets of additional information that are correlated with each other, but that in robustness differ from each other;

evaluating relationships dependent on a data string, the data string forming a predetermined message, existing between said multiple sets of additional information; and

determining, based on said detected additional information and the evaluation of said relationships, whether said content data has been processed, and determining the type of processing performed when said content data has been processed.
In explaining their Bilski analysis, the BPAI said that the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps. Thus, the claims fail the "particular machine requirement."

The BPAI's discussion of the "transformation requirement" is more interesting. They said that:
[h]ere we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world. These steps describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic "abstract idea." See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). As a whole, the claim involves no more than the manipulation of abstract ideas. See id.
The BPAI went on to say in other words that the claims were directed to merely looking at transforming one digital representation into another digital representation. As such, they are not within the scope of 101.

BPAI Again Uses "Software" Embodiment to Uphold 101 Rejection

Ex parte Robert Mark Magid
Decided: February 19, 2009

I find this decision interesting because it continues the BPAI's trend finding claims that may have a software embodiment unpatentable.

Claim 21 of Magid's application recited:
A computer program device for intercepting user exit interfaces in IMS programs, comprising:

logic means for communicating between an interception routine and an interface routine to resolve name ambiguity and enable simultaneous use of a single exit by plural users.
The Examiner issued a 101 for this means-plus-function claim because the claimed "logic means" were limited to logic, i.e., program code or software per se, which is not the same as physical means, such as hardware.

Magid's specification stated that:
[i]t is to be understood that in the system 10 described above, the logic of the present invention can be contained on a data storage device with a computer readable medium, such as a computer diskette. Or, the instructions may be stored on a magnetic tape, hard disk drive, electronic read-only memory (ROM), optical storage device, or other appropriate data storage device or transmitting device thereby making a computer program product, i.e., an article of manufacture according to the invention. In an illustrative embodiment of the invention, the computer-executable instructions may be written using mainframe assembler language. Moreover, the IMS user program 24 may be written using assembler, PL/I, FORTRAN, COBOL, Pascal, REXX, or Java.

The flow charts herein illustrate the structure of the logic of the present invention as embodied in computer program software. Those skilled in the art will appreciate that the flow charts illustrate the structures of computer program code elements including logic circuits on an integrated circuit, that function according to this invention. Manifestly, the invention is practiced in its essential embodiment by a machine component that renders the program elements in a form that instructs a digital processing apparatus (that is, a computer) to perform a sequence of function steps corresponding to those shown.
The BPAI sided with the Examiner, appears rightly so, and concluded that "consistent with the Specification, we find that the 112, sixth paragraph scope of the claimed 'logic means' broadly encompasses at least a first embodiment that consists of software per se." The Board did note that the claim also covers logic circuits on an integrated circuit, which is within the scope of 101. Thus, the claims cover both hardware and software.

Citing Nuijten, the Board said "[o]ur reviewing court has clearly stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” As a result, the Examiner's 101 rejection was confirmed.

Tuesday, March 3, 2009

Means-Plus-Function Claim Goes Down for Reference to Software and Signals

Ex parte John D. Morris and Daniel J. Clark
Decided: February 13, 2009

I find this decision interesting because it uses statements often found in software and hardware applications to reject means-plus-function claims under 101.

Morris and Clark claimed a system, method, and computer program product for processing or rasterizing graphic objects. Claim 33 recited a system having a means for rasterizing the graphic objects, including, for each of the graphic objects, using the tracking list to identify unmarked segments in the scan line, the unmarked segments corresponding to markable pixels in the pixel array.

In correctly construing the "means for" elements in light of the specification, the BPAI noted that the specification recited that "[t]he invention and all of the functional operations described in this specification can be implemented in digital electronic circuitry, or in computer software, firmware, or hardware." Various forms of this type of language can be found in a large number of applications past and present.

The BPAI pointed out the above passage unequivocally describes the various implementations in the alternative. The Board reasoned that the invention can exist solely in software. As a result, the Board found that means-plus-function limitations is not limited to only statutory subject matter under 101.

The Board also piled on by applying what I refer to as the "Death by Carrier Wave" 101 rejection. The Specification also mentioned that the invention could be implemented as a computer-readable product (i.e., a Beauregard type embodiment). The specification included the following language:
The invention can be implemented as one or more computer program products, i.e., one or more computer programs tangibly embodied in an information carrier, e.g., in machine-readable storage device or in a propagated signal for execution by, or to control the operation of, data processing apparatus, e.g., a programmable processor, a computer, or multiple computers.

The BPAI again took this opportunity to apply
Nuitjen and issue a new 101 rejection to the means-plus-function and Beauregard claims.

The BPAI reminded the Applicants that according to USPTO guidelines set forth in MPEP § 2106(IV)(C)(2)(2)(a), claims must be amended to recite solely statutory subject matter.

Post Bilski Guidlines

For those of you who might have missed the PTO's take on Bilski you can find "Guidance for Examining Process Claims in view of In re Bilski" at the following link:

BPAI Uses Preamble to Find Beauregard Claim 101 Eligible

Ex parte William E. Mazzara
Decided: February 5, 2009

I find this decision interesting because it appears to continue to blur the BPAI's view of the patentability of Beauregard claims.

Less than a month after the BPAI held a Beauregard claim unpatentable (see Ex Parte Cornea-Hasegan), they overturned an Examiner's 101 rejection of computer readable medium claim. Might the BPAI returning to their Ex Parte Bo Li line of thinking?

Claim 17 of Mazzara's application recited:
A computer usable medium including a program for storing an alert message request for a mobile vehicle communication system into a queue comprising:

computer program code that determines service type availability for the mobile vehicle communication system;

computer program code that receives an alert message request from a wireless communication system;

computer program code that sets a preferred roaming list flag
for the mobile vehicle communication system;

computer program code that stores the alert message request into a mobile vehicle communication message queue;

computer program code that initiates a parameter call to the wireless communication system to service the alert message request in the message queue; and

computer program code that services the alert message request to a mobile communication system until completion.
In rejecting this claim, the Examiner applied reasoning similar to that in Cornea-Hasegan. The Examiner stated that "“claims to a computer usable medium including a program and then listing program codes are not physical ‘things’ and do not define any structural and functional interrelationships between the computer program and other claimed elements of a computer, which permit the computer program’s functionality to be realized."

In reversing, the BPAI reminded the Examiner that "the fact that the claims covers methods which are essentially mathematical in nature ... is not dispositive [of whether the claims is directed to statutory subject matter]. Claims should be evaluated by their limitations, not by what they incidentally cover.”
In re Warmerdam, 33 F.3d 1354, 1359 (Fed. Cir. 1994). The BPAI went on to determine that the term "computer usable medium" was limited to only tangible manufactures relaying on a "skilled artisan's" understanding of that term (note that no express definition was provided in the specification). However, the BPAI needed to go further and determine that the preamble of claims 17 was limiting before confirming patentablity of the Beauregard claim.

In view of this decision, it appears that a standard "Beauregard" preamble (i.e., one that recites a "computer readable medium") is not enough to ward off 101 scrutiny. This appears contrary to PTO's long running practice of holding Beauregard claims as patentable under 101.

Wednesday, February 25, 2009

PTO Announces a New Test for Claim Indefiniteness

My first post is a "reprint" of an article I wrote a few months back from McDermott's IP Update. Below I discuss the most recent precedential opinion from the BPAI.

The Board of Patent Appeals and Interferences (the Board) announced a new standard for determining compliance with 35 USC § 112, ¶ 2 during examination of a patent application. In a precedential opinion, a five-member panel of the Board determined that a rejection under § 112, ¶ 2 for indefiniteness is proper if a claim has multiple “plausible” interpretations. Ex Parte Miyazaki, Appeal No. 2007-3300, (PTO Bd. App. and Interf. 2008) (Horner, APJ) (precedential).

Miyazaki filed a patent application claiming a large printer and various components of that printer. Miyazaki The examiner rejected various claims, asserting that recitations in the claims relating the height of the paper feeding unit and the sheet feeding area to a user’s height were unclear. appealed

In deciding the appeal, the Board considered an exemplary claim which recited (in part) as follows: “a sheet feeding area positioned at a height at which a user, who is approximately 170 cm tall, standing in front of the printer can set up a printing medium without having to bend substantially at the waist, wherein the sheet feeding area is positioned at the height when the printer is placed substantially at ground level.”

The Board focused on “sheet feeding area.” After reviewing the discussion of the sheet feeding area in the specification and the ordinary meaning of the terms “sheet” and “area,” the Board determined that the term was amenable to two plausible definitions. However, neither of these definitions made sense in view of the remainder of the claims. Thus, the Board concluded that neither the specification, nor the claims nor the ordinary meanings of the words provided any guidance as to what Miyazaki intended to cover. In a departure from prior precedent, the Board announced that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”

In support of its action, the Board cited the Federal Circuit’s suggestion in Halliburton Energy Servs. v. M-ILLC (see IP Update, Vol. 11, No. 2) that: “the task of determining whether that limitation is sufficiently definite is a difficult one that is highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area). We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.

In connection with its analysis of other, purely functional claims, the Board held that a claim drafted in purely functional language, without the appropriate “means for” language available under 35 U.S.C. § 112, ¶ 6, fails to meet the requirements of 35 U.S.C. § 112, ¶ 1 and is unpatentable. The Board relied for this proposition on the Supreme Court’s decision in Halliburton Oil Well Cementing Co. v. Walker.