Board issues new rejections in Ex parte Smith
Although the appellant prevailed as to the rejection by the examiner, the Board entered new grounds of rejection in
Ex parte Smith:
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1-7 under 35 U.S.C. § 112, second paragraph, and enter a new ground of rejection for claims 8-20 under 35 U.S.C. § 112, first paragraph.
Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.”
Special rules of claim construction allow for claim limitations drafted in functional language and are set forth in 35 U.S.C. § 112, sixth paragraph, which provides for:
[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision permits a claim limitation to be set forth using solely functional language, it operates to restrict such claim limitations to those structures, materials, or acts disclosed in the specification (or their equivalents) that perform the claimed function. Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998).
The Federal Circuit has established that use of the term “means” is central to the analysis of whether a claim limitation should be interpreted in accordance with 35 U.S.C. § 112, sixth paragraph: use of the word “means” creates a rebuttable presumption that the inventor intended to invoke § 112, sixth paragraph, whereas failure to use the word “means” creates a rebuttable presumption that the inventor did not intend the claims to be governed by § 112, sixth paragraph. Id. at 703-04; Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012). (...)
The presumption may be overcome by a claim limitation that uses a non- structural term that is “simply a nonce word or a verbal construct that is not recognized as the name of structure” but is merely a substitute for the term “means for” associated with functional language. Lighting World, 382 F.3d at 1360. Claim language that further defines a term that otherwise would be a nonce word can denote sufficient structure to avoid construction under
§ 112, sixth paragraph, MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006), as can a claim limitation that contains a term that “is used in common parlance or by persons of skill in the pertinent art to designate structure,” Lighting World, 382 F.3d at 1359. Nor will claim language invoke a § 112, sixth paragraph, construction if persons of ordinary skill in the art reading the specification understand the term to be the name for a structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”).
As to indefiniteness:
A claim limitation interpreted in accordance with 35 U.S.C. § 112, sixth paragraph, is construed to cover the corresponding structures, materials, or acts disclosed in the specification (and their equivalents) that perform the claimed function. Personalized Media, 161 F.3d at 703. For a computer-implemented claim limitation interpreted under § 112, sixth paragraph, the corresponding structure must include the algorithm needed to transform the general purpose computer or processor disclosed in the specification into the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, the specification must sufficiently disclose an algorithm to transform the general purpose computer or processor to a special purpose processor programmed to perform the disclosed algorithm. Id. at 1338. An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” MICROSOFT COMPUTER DICTIONARY 23 (5th ed. 2002). An applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
An indefiniteness rejection under § 112, second paragraph, is appropriate if the specification discloses no corresponding algorithm associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38. Mere reference to a general purpose computer or processor with appropriate programming without providing an explanation of the appropriate programming, or to “software” without providing detail about the means to accomplish the software function, is not an adequate disclosure. Id. at 1334; Finisar, 523 F.3d at 1340-41. In addition, simply reciting the claimed function in the specification, while saying nothing about how the computer or processor ensures that those functions are performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009).
As to written description
The first paragraph of 35 U.S.C. § 112 contains a written description requirement that is separate and distinct from the enablement requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). The purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.” Id. at 1353-54 (citation omitted). This requirement “ensures that the public receives a meaningful disclosure in exchange for being excluded from practicing an invention for a period of time.” Id.
To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad, 598 F.3d at 1351. The written description requirement does not demand any particular form of disclosure; however, “a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted). The written description requirement of 35 U.S.C. § 112, first paragraph, applies to all claims including original claims that are part of the disclosure as filed. Id. at 1349. Original claim language does not necessarily satisfy the written description requirement for the claimed subject matter. Id.
AND
Although originally-filed claim 8 may have disclosed the asset for which the opinion timeline is generated, originally-filed claim 8 did not disclose how the “opinion timeline” itself is generated and so does not provide the necessary written description support for pending claim 8. Accord Ariad, 598 F.3d at 1349 (indicating original claim language does not necessarily satisfy the written description requirement for the claimed subject matter).
(...)
Beyond general statements of the function to be performed, which, at most, may render the claimed function obvious, the inventor has not shown how the recited opinion timeline is generated. This disclosure is not sufficient because a description that merely renders the invention obvious does not satisfy the written description requirement. Ariad, 598 F.3d at 1352.
Ex parte Smith:
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1-7 under 35 U.S.C. § 112, second paragraph, and enter a new ground of rejection for claims 8-20 under 35 U.S.C. § 112, first paragraph.
Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.”
Special rules of claim construction allow for claim limitations drafted in functional language and are set forth in 35 U.S.C. § 112, sixth paragraph, which provides for:
[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision permits a claim limitation to be set forth using solely functional language, it operates to restrict such claim limitations to those structures, materials, or acts disclosed in the specification (or their equivalents) that perform the claimed function. Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998).
The Federal Circuit has established that use of the term “means” is central to the analysis of whether a claim limitation should be interpreted in accordance with 35 U.S.C. § 112, sixth paragraph: use of the word “means” creates a rebuttable presumption that the inventor intended to invoke § 112, sixth paragraph, whereas failure to use the word “means” creates a rebuttable presumption that the inventor did not intend the claims to be governed by § 112, sixth paragraph. Id. at 703-04; Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012). (...)
The presumption may be overcome by a claim limitation that uses a non- structural term that is “simply a nonce word or a verbal construct that is not recognized as the name of structure” but is merely a substitute for the term “means for” associated with functional language. Lighting World, 382 F.3d at 1360. Claim language that further defines a term that otherwise would be a nonce word can denote sufficient structure to avoid construction under
§ 112, sixth paragraph, MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006), as can a claim limitation that contains a term that “is used in common parlance or by persons of skill in the pertinent art to designate structure,” Lighting World, 382 F.3d at 1359. Nor will claim language invoke a § 112, sixth paragraph, construction if persons of ordinary skill in the art reading the specification understand the term to be the name for a structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”).
As to indefiniteness:
A claim limitation interpreted in accordance with 35 U.S.C. § 112, sixth paragraph, is construed to cover the corresponding structures, materials, or acts disclosed in the specification (and their equivalents) that perform the claimed function. Personalized Media, 161 F.3d at 703. For a computer-implemented claim limitation interpreted under § 112, sixth paragraph, the corresponding structure must include the algorithm needed to transform the general purpose computer or processor disclosed in the specification into the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, the specification must sufficiently disclose an algorithm to transform the general purpose computer or processor to a special purpose processor programmed to perform the disclosed algorithm. Id. at 1338. An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” MICROSOFT COMPUTER DICTIONARY 23 (5th ed. 2002). An applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
An indefiniteness rejection under § 112, second paragraph, is appropriate if the specification discloses no corresponding algorithm associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38. Mere reference to a general purpose computer or processor with appropriate programming without providing an explanation of the appropriate programming, or to “software” without providing detail about the means to accomplish the software function, is not an adequate disclosure. Id. at 1334; Finisar, 523 F.3d at 1340-41. In addition, simply reciting the claimed function in the specification, while saying nothing about how the computer or processor ensures that those functions are performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009).
As to written description
The first paragraph of 35 U.S.C. § 112 contains a written description requirement that is separate and distinct from the enablement requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). The purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.” Id. at 1353-54 (citation omitted). This requirement “ensures that the public receives a meaningful disclosure in exchange for being excluded from practicing an invention for a period of time.” Id.
To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad, 598 F.3d at 1351. The written description requirement does not demand any particular form of disclosure; however, “a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted). The written description requirement of 35 U.S.C. § 112, first paragraph, applies to all claims including original claims that are part of the disclosure as filed. Id. at 1349. Original claim language does not necessarily satisfy the written description requirement for the claimed subject matter. Id.
AND
Although originally-filed claim 8 may have disclosed the asset for which the opinion timeline is generated, originally-filed claim 8 did not disclose how the “opinion timeline” itself is generated and so does not provide the necessary written description support for pending claim 8. Accord Ariad, 598 F.3d at 1349 (indicating original claim language does not necessarily satisfy the written description requirement for the claimed subject matter).
(...)
Beyond general statements of the function to be performed, which, at most, may render the claimed function obvious, the inventor has not shown how the recited opinion timeline is generated. This disclosure is not sufficient because a description that merely renders the invention obvious does not satisfy the written description requirement. Ariad, 598 F.3d at 1352.
posted by Lawrence B. Ebert at 5:43 PM
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