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.