Many patent applications in the area of EE, software and system engineering contain a microcontroller or variations there of as part of implementation of the invention. The two cases discussed below involve several sections of 35 U.S.C. § 112. They are shown below for reference.
- (a) IN GENERAL. —The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. (Pre-AIA -Paragraph 1)
- (b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. (Pre-AIA -Paragraph 2)
- (f) ELEMENT IN CLAIM FOR A COMBINATION. —An 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. (Pre-AIA -Paragraph 6)
Two decisions of PTAB are discussed below.
|Case # Appeal # Type of Decision|
|P1 2007-3072 Precedential|
|R1 2012-007631 Informative|
In case P1 Ex parte TIMOTHY J.O. CATLIN and KEVIN T. ROWNEY:
The Appellants’ claimed invention is to a method for implementing an on-line incentive system at a merchant’s web site. Claim 1, reproduced below, (with added effect of Bold) is representative of the subject matter on appeal.
- A method for implementing an on-line incentive system, said method comprising the steps of:
providing, at a merchant’s web site, means for a consumer to participate in an earning activity to earn value from a merchant; and transferring value from said merchant to said consumer for participation in said earning activity, if said consumer qualifies, without re-directing said consumer away from said merchant’s web site, whereby said consumer’s focus of activity remains at said merchant’s web site.
FINDINGS OF FACT
The following enumerated findings are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office).
- The Appellants’ Specification describes generally, that the consumer can access an earning activity through the merchant’s web site: In one embodiment, to receive value, the consumer surfs up to a web site of merchant and the consumer enters an “earning activity”, specified by the merchant.”
- The Appellants’ Specification does not provide, however, an algorithm by which the consumer can participate in an earning activity and earn value.
- The Specification describes in the Background of the Invention different types of incentive programs, such as frequent flyer and “points”-based programs.
- This description of prior art incentive programs merely provides examples of the results of the operation of an unspecified algorithm.
PRINCIPLES OF LAW
When a claim uses the term “means” to describe a limitation, a presumption inheres that the inventor used the term to invoke § 112, 6. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed.Cir.2003).
“If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007); see also In re Donald son, 16 F.3d 1189, 1195 (Fed.Cir. 1994) (en banc).
In Aristocrat Techs. Austl. Pty Ltd. v Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), the court set forth that for a claim to a programmed computer, a particular algorithm may be the corresponding structure under § 112, sixth paragraph: For a patentee to claim a means for performing a particular function and then to disclose only a general-purpose computer as the structure designed to perform that function amounts to pure functional claiming. Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to “the corresponding structure, material, or acts” that perform the function, as required by section 112 paragraph 6.
A new ground of rejection of claims 1-25 under 35 U.S.C. § 112, second paragraph. Is entered.
The patent application by use of “means for consumer to participate in earing activity “ attracts the § 112, sixth paragraph. Based on finding of facts and principles of law the PTAB was looking for an algorithm as the corresponding structure as means for performing the earning activity function. Since this was missing in the specification the PTAB decision is explainable.
In case R1 Ex parte AARON SMITH :
Appellant’s invention is directed to updating user reviews of a product based on, for instance, extended use, new revelations, additional features, and upgrades. Independent claims 1 and 8 are illustrative of the invention:
- A computer system comprising: memory; and a processor in communication with the memory, the processor programmed to: receive, from a user, a first review of an asset; store the first review of the asset in association with a user identifier in a memory device; receive, from the user, a second review of the asset; store the second review in association with the first review and the user identifier in a memory device; and generate an opinion timeline for the asset for the user associated with the user identifier.
- A computer-implemented method comprising: receiving, from a user, a first review of an asset; storing the first review of the asset in association with a user identifier in a memory device; receiving, from the user, a second review of the asset; storing the second review in association with the first review and the user identifier in a memory device; and generating an opinion timeline for the asset for the user associated with the user identifier.1
FINDINGS OF FACT
Again, using the preponderance of evidence standard used by PTAB, they are enumerated as follows.
FF1. The Specification states “[t]he server 1 includes a processor and memory, which are in communication with one another.” The Specification discloses that, when a user is browsing a web page, a request to access content is communicated to the server over the network and the processor accesses the memory to provide requested content, which is communicated to the user over the network
FF2. The Specification discloses a computer system within which a set of instructions may be executed for performing any one or more of the methodologies discussed in the disclosure. The “computer system includes a processor (e.g., a central processing unit (CPU), a graphics processing unit (GPU) or both) . . ..”
FF3. The Specification discloses that instructions embodying any of the functions described in the Specification may reside within the processor.
FF4. The Specification discloses a system for creating an opinion timeline that includes an opinion timeline engine, which includes a logic layer configured to generate an opinion timeline using data in the data stores.
FF5. The Specification discloses that “[t]he logic layer associates these two user reviews together using the user identification information and/or asset identification information associated with both reviews.. The logic layer can then generate the opinion timeline. Id.
FF6. The Specification discloses a process for creating an opinion timeline that includes allowing a user to submit a first review of an asset on a website, storing the first review of the asset on the website with a user identifier), allowing the user to submit a second review of the asset on the website storing the second review with the first review and the user identifier and generating an opinion timeline for the asset for the user associated with the user identifier.
FF7. The Specification describes an example of steps in which the opinion timeline engine may receive a user review of an asset stored in one of the data stores and stores that user review in the user opinion data store.
FF8. The Specification describes an example of steps in which the opinion timeline engine may receive a user review related to the first review and stores that user review in the user opinion data store. The second review may be an edit of the first review or an addition to the first review. The second review may be based on, for example, a change in opinion over time, a change in opinion based on an update, a comparison of a similar asset, and the like.
FF9. The Specification describes an example in which the opinion timeline engine may generate an opinion timeline using the first review and the second review (e.g., by matching the user identifier of the first review with the user identifier of the second review).
FF10. Originally-filed claim 8 recited “[a] computer-implemented method comprising: allowing a user to submit a first review of an asset on a website; storing the first review of the asset on the website with a user identifier; allowing the user to submit a second review of the asset on the website; storing the second review with the first review and the user identifier; and generating an opinion timeline for the asset for the user associated with the user identifier.”
FF11. AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1398 (4th ed. 2006) (defining “processor” as “2. Computer Science a. A computer. b. A central processing unit. c. A program that translates another program into a form acceptable by the computer being used.”).
FF12. MICROSOFT COMPUTER DICTIONARY 92 (5th ed. 2002) (defining “central processing unit” as “CPU”); id. at 132 (defining “central processing unit” as “[a]cronym for central processing unit. The computational and control unit of a computer. The CPU is the device that interprets and executes instructions . . . By definition, the CPU is the chip that functions as the ‘brain’ of a computer. In some instances, however, the term encompasses both the processor and the computer’s memory or, even more broadly, the main computer console (as opposed to peripheral equipment.)”).
FF13. MICROSOFT COMPUTER DICTIONARY 239 (5th ed. 2002)(defining “graphics coprocessor” as “[a] specialized microprocessor, included in some video adapters, that can generate graphical images such as lines and filled areas in response to instructions from the CPU, freeing the CPU for other work”); id. at 240 (entry for “graphics processor” indicating “[s]ee graphics coprocessor”).
FF14. AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1810 (4th ed. 2006) (defining “timeline” as “2a. A chronology”).
FF15. Brown discloses a system and method for electronically modifying historic sales baselines by evaluating product and consumer characteristics to accurately predict the impact of promotions on sales to specific groups of consumers . A user adjusts a baseline by identifying and assigning values to factors that would have caused the baseline to be different had the factors been included to generate the baseline.
FF16. Brown describes a main menu of a baseline modifying system which preferably includes an Add/Edit Modifying Factors option to adjust modifying factors
FF17. Brown discloses a preferred embodiment in which the modifying factors can be thought of as describing the nature of the relationship between the product and consumers. When a product is brand new, the user will at first estimate what values should be used for the various factors. As the user gains more experience with the product over time, the user is able to refine the values used for the modifying factors. .
PRINCIPLES OF LAW
35 U.S.C. § 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).
When an inventor has not signaled an intent to invoke § 112, sixth paragraph, by using the term “means,” the presumption against its invocation is strong but can be overcome if “the claim term fails to recite insufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (internal quotation marks omitted) (citation omitted)). A claim limitation that “essentially is devoid of anything that can be construed as structure” can overcome the presumption. Flo Healthcare, 697 F.3d at 1374. 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.”).
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).
Standard of disclosure for an algorithm:
If the specification explicitly discloses an algorithm, the sufficiency of the disclosure must be determined in light of the level of ordinary skill in the art. Aristocrat, 521 F.3d at 1337. The specification must sufficiently disclose an algorithm to transform a general-purpose processor to a special purpose processor so that a person of ordinary skill in the art can implement the disclosed algorithm to achieve the claimed function. Id. at 1338.
35 U.S.C. § 112, First Paragraph.
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.
Claim 8 is directed to a computer-implemented method including, among other limitations, “generating an opinion timeline for the asset for the user associated with the user identifier.” As an initial matter, we note that originally-filed claim 8 recited generating an opinion timeline .
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).
Although Appellant points to paragraph of his Specification as disclosing the generating limitation, the cited portion merely describes a means for associating two user reviews and does not describe how an opinion timeline can be generated. Further, as discussed in the previous section, the Specification only identifies a generic processor and does not disclose an algorithm for “generating an opinion timeline for the asset for the user associated with the user identifier”. 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.
Because Appellant’s disclosure, as originally filed, does not convey to an ordinarily skilled artisan that Appellant had possession of the claimed invention, we conclude that claim 8 does not have sufficient written description support to satisfy 35 U.S.C. § 112, first paragraph.
First, we consider how an ordinarily skilled artisan would understand the term “processor” as used in claim 1. Based on our review of dictionary definitions, we conclude that a skilled artisan would not recognize “processor” as the name of a sufficiently definite structure for generating an opinion timeline and performing the other functions recited by the “processor” limitation.
The term “processor” in claim 1 is also different from the claim terms “circuit” and “circuitry,” which have been held to denote sufficiently definite structure to avoid the application of § 112, sixth paragraph. See MIT, 462 F.3d at 1354-56; Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320-21 (Fed. Cir. 2004); Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1374 (Fed. Cir. 2003). The term “circuit” coupled with a description in the claims of the circuit’s operation typically conveys the structural arrangement of the circuit’s components. See MIT, 462 F.3d at 1355; Linear Tech., 379 F.3d at 1320; Apex, 325 F.3d at 1373. In contrast, the recited processor and claim language here do not convey to a person skilled in the art anything about the internal components, structure, or specific operation of the processor.
For these reasons, we conclude that the term “processor” as used in claim 1 is a non-structural term that would not be understood by an ordinarily skilled artisan as having sufficiently definite structure to perform all the recited functions The term is used as merely a substitute for the term “means for” associated with recited functional language and thus invokes the application of § 112, sixth paragraph
New Ground of Rejection under 35 U.S.C. § 112, Second Paragraph – Claim 1
Having concluded that the “processor” limitation in claim 1 invokes the application of § 112, sixth paragraph, we now consider whether Appellant’s Specification discloses sufficient corresponding structure for performing the claimed functions. See Aristocrat, 521 F.3d at 1333.Because the limitations of claim 1 are computer-implemented and cannot all be performed by a general-purpose computer without any special programming, we must determine whether the Specification discloses an algorithm that transforms a general-purpose processor into a special purpose processor that performs the claimed functions. Id.; cf. Katz, 639 F.3d at 1316.
Decision: A new ground of rejection for claims 1-7 under 35 U.S.C. § 112, second paragraph, and a new ground of rejection for claims 8-20 under 35 U.S.C. § 112, first paragraph is entered.
Although this case in terms of complexity is more than the previous one, the basic reasons for rejection seem to be similar. That is disclosing a means function in terms of a “processor” without disclosing the corresponding algorithm that would transform the processor in to a structure that could be means for performing the claimed function.