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?

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.