Saturday, April 11, 2009

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?


  1. This is scary stuff.

    I've been taught to draft "component operable to [verb]" claims rather than "component that [verb]S" claims. The stated rationale was that "component that [verb]S" is infringed only when the unit is operating, so the direct infringer is the user. In contrast, the device itself infringes the "component operable to [verb]", just sitting in the box -- no user required for direct infringement. Thus, proving infringement is more complicated for the "operable to" claim type.

    Can anyone else comment on this?

    If this is true, and I have reason to prefer "operable to" from an infringement point-of-view, then seems like those of us who practice in the EE/CS arts are in trouble under the current BPAI regime. Because the BPAI now makes it almost impossible to get a claim issued that is also easily infringed.

  2. I don't think the use of "operable to" was the problem here. Rather, it was "operable to" in combination with the clause "wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness."

    The question is, how can the scaling value do any scaling when its existence isn't certain?

    I would try to fix this by saying something like "wherein the processor is further operable to scale the one or more LED signal values based upon a percentage of a particular LED brightness using a determined scaling value."

  3. This complaint about "operable to" has been in the MPEP for years.

    The simple solution is to roll your eyes and change it to "operative" or "that".

    I've had one non-english speaking examiner object to operative as if it were operable, but they are not the same word and have different meanings.

  4. Karen, I think your concern can be addressed by adding --that, when the system is operating,--

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