Ex Parte Erol et al

Patent Trial and Appeal Board

Mar 11, 2013

11461109 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BERNA EROL and JONATHAN J. HULL
____________________

Appeal 2011-001143
Application 11/461,109
Technology Center 2100
____________________

Before: ALLEN R. MACDONALD, LINDA E. HORNER, MICHAEL W.
KIM, BARBARA A. BENOIT, and LYNNE E. PETTIGREW,
Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3-201. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART, and enter a NEW GROUND of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
The claims are directed to techniques for identifying one or more
objects from digital media content and comparing them to one or more
objects specified by a machine readable identifier (Spec., para. [0001]).
Claims 1 and 18, reproduced below, are illustrative of the claimed subject
matter:
1. A computer-implemented method performed by
a data processing system of processing digital media
content, the method executed by a computer and
comprising:
determining, from a machine readable identifier, a
first object descriptor associated with an object, the first
object descriptor specifying one or more features of
content within the object;
determining a set of one or more objects from the
digital media content;
generating an object descriptor for each object in the
set of objects, each object descriptor specifying one or
more features of content within an object from the set;

1 The Appellants and the Examiner agree that claim 2 is cancelled and
claims 1 and 3-20 are pending (App. Br. 2; Ans. 3). The Claims Appendix
included with the Amendment After Final filed January 22, 2010 lists claims
1 and 3-20, of which claims 1, 18, and 19 are independent. This coincides
with the Summary of Claimed Subject Matter in the Appeal Brief, which
lists claims 1, 18, and 19 as independent (App. Br. 3-6). However, the
Claims Appendix in the Appeal Brief lists claims 1-18 and 20, of which
claims 1, 17, and 18 are independent. Accordingly, we will treat that Claims
Appendix as being in error, and will refer to the numbering in the Claims
Appendix included with the Amendment After Final filed January 22, 2010.
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identifying at least one object descriptor from the
object descriptors determined for the set of objects that
matches the first object descriptor determined from the
machine readable identifier; and
performing an action in response to identifying the
at least one object descriptor that matches the first object
descriptor.

18. A system comprising:
a reader adapted to read a machine readable identifier;
and
a processor adapted to:
determine, from the machine readable identifier, a
first object descriptor associated with an object, the first
object descriptor specifying one or more features of
content within the object;
determine a set of one or more objects from digital
media content;
generate an object descriptor for each object in the
set of objects, each object descriptor specifying one or
more features of content within an object from the set;
identify at least one object descriptor from the
object descriptors determined for the set of objects that
matches the first object descriptor determined from the
machine readable identifier; and
perform an action in response to identifying the at
least one object descriptor that matches the first object
descriptor.

Claim 20 is rejected under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement.
Claims 1 and 3-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over King (US 2006/0026140 A1, pub. Feb. 2, 2006).

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ISSUES
Did the Examiner err in asserting that “calculating a metric for each
object in the set of objects, the metric providing a measure of similarity
between an object descriptor for an object in the set and the first object
descriptor; and comparing the metric for each object against a threshold to
determine whether an object descriptor associated with the metric matches
the first object descriptor,” as recited in dependent claim 20, fails to comply
with the written description requirement?
Did the Examiner err in asserting that King discloses or suggests both
a “machine readable identifier” and an “object descriptor” determined from
the machine readable identifier, as recited in independent claim 12?
Did the Examiner err in asserting that King discloses or suggests
“calculating a metric for each object in the set of objects, the metric
providing a measure of similarity between an object descriptor for an object
in the set and the first object descriptor; and comparing the metric for each
object against a threshold to determine whether an object descriptor
associated with the metric matches the first object descriptor,” as recited in
dependent claim 20?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) 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).

2 We choose independent claim 1 as representative of claims 1 and 3-17. 37
C.F.R. § 41.37(c)(1)(vii).
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Specification
FF1. The Specification discloses that “according to one technique,
for each object descriptor in the set of object descriptors generated for
objects determined from the media content, a distance metric is calculated
for that object descriptor and each object descriptor in the set of object
descriptors decoded from a machine readable identifier, where the distance
metric between two object descriptors provides a measure of the similarity
or matching between the two object descriptors. For any two object
descriptors, the distance metric calculated for the pair may then be compared
to a preset threshold to determine if the two object descriptors are to be
considered as matching” (para. [0037]).
FF2. The Specification discloses that “[a] machine readable identifier
114 encapsulates information related to a set of one or more objects.
Machine readable identifiers may be embodied in different forms such as
barcodes, information stored in radio frequency identifier (RFID) tags, and
the like” (para. [0022]).
FF3. The Specification discloses that “[a]n object descriptor
identifies an object by specifying one or more features (or characteristics) of
the object. Various different types of objects may be specified, possibly for
different media content types. Examples of objects include but are not
limited to a document fragment (for a digital document content), an image, a
slide, a person (for a photograph), a speech pattern (for audio content), a
motion (for video content), etc.” (para. [0024]).
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FF4. Non-limiting examples of digital media content in the
Specification include an image, audio information, and video information
(para. [0004]).

ANALYSIS
Written Description Rejection of Dependent Claim 20
We are persuaded the Examiner erred in asserting that “calculating a
metric for each object in the set of objects, the metric providing a measure
of similarity between an object descriptor for an object in the set and the
first object descriptor; and comparing the metric for each object against a
threshold to determine whether an object descriptor associated with the
metric matches the first object descriptor,” as recited in dependent claim 20,
fails to comply with the written description requirement. There is some
dispute as to whether this rejection is still pending (Ans. 7, 17; Reply Br. 2-
3; page 2 of Advisory Action mailed February 18, 2010). Regardless of the
exact status of the rejection, pages 7-8 of Amendment After Final filed
January 22, 2010 identifies paragraph [0037] of the Specification as
providing written description support for the aforementioned aspect of
dependent claim 20. We agree (FF1). Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991) (the test for determining compliance with the
written description requirement is “whether the disclosure of the application
relied upon ‘reasonably conveys to the artisan that the inventor had
possession at that time of the . . . claimed subject matter.’”) Accordingly,
insofar as this rejection may still be pending, it is not sustained.

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Obviousness Rejection of Independent Claim 1
We are not persuaded the Examiner erred in asserting that King
discloses or suggests both a “machine readable identifier” and an “object
descriptor” determined from the machine readable identifier, as recited in
independent claim 1 (App. Br. 8-13; Reply Br. 3-7). The Examiner asserts
that the barcode itself in King corresponds to the recited “machine readable
identifier,” while the Universal Product Code (hereinafter “UPC”) associated
with the barcode itself corresponds to the recited “object descriptor” (Ans.
21-24; 27-28). In the alternative, the Examiner asserts that the barcode/UPC
corresponds to the recited “machine readable identifier,” and the product
“Paper Towels/Toilet Paper/Air Freshener” corresponds to the recited
“object descriptor” (Ans. 21-24; 27-28). Either construction would meet the
definitions of “machine readable identifier” and “object descriptor” set forth
in the Specification (FF2, FF3).
Appellants assert that King’s references to a barcode are to identify a
document using an identification number, and that an identification number
is not “a first object descriptor” because the identification number does not
specify “one or more features of content within the object”; it only identifies
the document (App. Br. 10; Reply Br. 4-6). However, identity is a feature.
Thus, an identification number identifying a document (i.e., object) is
specifying “one or more features of content within the object.” For similar
reasons, Appellants’ arguments as to why text patterns, fingerprints, facial
features, and RFID are machine readable identifiers that do not include
object descriptors (App. Br. 11-12) are unpersuasive.
Using text patterns as an example, Appellants assert that King does
not disclose or suggest “identifying at least one object descriptor from the
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object descriptors determined for the set of objects that matches the first
object descriptor determined from the machine readable identifier,” as
recited in independent claim 1 (App. Br. 12). Specifically, Appellants assert
that simply searching the Internet for a matching text pattern is not the same
as matching a specific text pattern from a discrete set of text patterns.
However, independent claim 1 recites “determining a set of one or more
objects from the digital media content,” without providing any definition as
to the limits of digital media content (FF4). Accordingly, under a broadest
reasonable construction, searching for a specific text pattern in a “set” of text
patterns may include searching among all text patterns on the Internet.
Also using text patterns as an example, Appellants assert that “[t]he
Examiner also does not explain how the text is a “first object descriptor
determined from the machine readable identifier” (App. Br. 12-13;
emphasis original; Reply Br. 6-7). However, the text itself is the machine
readable identifier, and the text pattern is the object descriptor. Again, the
definitions of machine readable identifier and object descriptor are
extremely broad (FF2, FF3).
We sustain the rejection of independent claim 1. As Appellants
provide the same arguments concerning independent claim 19, we will also
sustain its rejection.

Obviousness Rejection of Dependent Claim 20
We are not persuaded the Examiner erred in asserting that King
discloses or suggests “calculating a metric for each object in the set of
objects, the metric providing a measure of similarity between an object
descriptor for an object in the set and the first object descriptor; and
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comparing the metric for each object against a threshold to determine
whether an object descriptor associated with the metric matches the first
object descriptor,” as recited in dependent claim 20 (App. Br. 14; Reply Br.
7-8). We agree with the Examiner that “the MATCHING of King suggests a
measure of similarity. There has to be a metric to match. There has to be a
measure of similarity to perform matching. Thus, King does in fact teach
‘calculating a metric of similarity between the scanned text and the matching
text obtained through a search engine’” (Ans. 29). In a simplest form, the
metric for matching would be “exact” with the threshold for matching also
being “exact.”

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
independent claim 18 under 35 U.S.C. § 112, second paragraph, for
indefiniteness. Specifically, we construe processor in “a processor adapted
to” as a nonce word invoking § 112, sixth paragraph, and find that the
Specification does not disclose sufficient structure, in the form of a general
purpose processor and an algorithm, corresponding to “perform an action in
response to identifying the at least one object descriptor that matches the
first object descriptor,” as required by Aristocrat Techs. Australia Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).

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FINDINGS OF FACT
Specification
FF5. The Specification discloses that “[p]rocessor 102 may
communicate with the other subsystems using one or more buses. The
various subsystems depicted in Fig. 1A may be implemented in software, or
hardware, or combinations thereof” (para. [0019]).
FF6. Memory subsystem 104 may be configured to store the basic
programming and data constructs that provide the functionality of system
100. For example, software code modules or instructions 112 that provide
the functionality of system 100 may be stored in memory 104. These
software modules or instructions may be executed by processor 102 (para.
[0020]).
FF7. Processing for decoding and extracting the information from a
machine readable identifier may be performed by processor 102 (para.
[0023]).
FF8. Various different types of actions may be initiated or performed
in response to identifying the at least one object descriptor that matches the
first object descriptor. Examples of actions include annotating the media
content, performing an action using the media content, updating a database,
sending a message, invoking a URL, or other like actions. Metadata
information, if any, associated with the matching object descriptor in
information 116 decoded from machine readable identifier 114 may be used
as part of the action (paras. [0006]-[0008], [0026], [0040]-[0041], [0068],
[0070], [0079], [0081]).

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PRINCIPLES OF LAW
Analysis of Whether Computer-Implemented
Claim Limitations Invoke 35 U.S.C. § 112, Sixth paragraph
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 Communications, 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 (Fed. Cir. 2012).
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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 sufficiently
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 and 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 a § 112, sixth paragraph
construction, 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.”).
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Indefiniteness Analysis for Computer-Implemented
Claim Limitations Interpreted Under
35 U.S.C. § 112, Sixth Paragraph
The structure corresponding to a 35 U.S.C. § 112, sixth paragraph,
claim limitation for a computer-implemented function 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, 521 F.3d at 1333. 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, Microsoft
Press (5th ed. 2002). 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).
A 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
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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).
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.

ANALYSIS
Section 112, sixth paragraph
The issue is whether the term “a processor adapted to” as used in
claim 18 is a verbal construct devoid of structure that is used as a substitute
for the term “means for” and so invokes the application of § 112, sixth
paragraph. Claim 18 recites a system comprising a reader and “a processor
adapted to” perform several steps, including “perform an action in response
to identifying [] at least one object descriptor that matches the first object
descriptor.” As such, failure to recite the word “means” creates the strong
presumption that the inventor did not intend the limitation “a processor
adapted to” to be governed by § 112, sixth paragraph. To see whether the
presumption is overcome, we look to how a skilled artisan would understand
“processor,” whether the limitation recites sufficient structure, material, or
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acts for achieving the recited functions, and whether the term “processor” is
modified by functional language.
We begin with a dictionary definition of a “processor,” which would
be recognized, by a skilled artisan in computer programming, as a computer,
a central processing unit, or a program that translates another program into a
form acceptable by the computer being used.3 See Lighting World, 382 F.3d
at 1360-61 (consulting dictionaries to determine whether a claim term has a
generally understood meaning that denotes structure). This comports well
with references to “processor” in the Specification, which in the aggregate,
amounts to “software, or hardware, or combinations thereof” that execute
“software modules or instructions” (FF5-FF7). CCS Fitness, , 288 F.3d at
1366 (claim terms are properly construed to include limitations not
otherwise inherent in the term when the Specification “clearly set[s] forth a
definition of the disputed claim term”). Given this dictionary definition and
complementary examples in the Specification, we find that the “processor”
recited in claim 18 is a non-structural term that would not be recognized by a
skilled artisan as the name of a sufficiently definite structure for
implementing the “perform” function recited above. As such, the term
“processor” at least initially appears to be merely a substitute for the term
“means for” associated with recited functional language.
To confirm whether the presumption against such a substitution is
overcome, we look to determine whether the functions performed by the
processor are typical functions found in a commercially, available off-the-
shelf processor, which would weigh against invoking § 112, sixth paragraph.

3 American Heritage Dictionary of the English Language 1398 (4th ed.
2006) (defining processor).
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See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011) (functions such as “processing,” “receiving,” and
“storing” that can be achieved by any general purpose computer without
special programming do not require disclosure of more structure than the
general purpose processor that performs those functions). If the functions
performed by the processor are not typical functions found in a processor,
we look to see whether the claim recites sufficient, structure, material, or
acts for achieving the specified function. If so, § 112, sixth paragraph
should not be applied. Also weighing against invoking § 112, sixth
paragraph would be when the term processor includes a structural modifier,
such as a “height-adjustment” processor. To that end, we find that none of
the above factors apply to the “processor” recited in claim 18. A
commercially, available off-the-shelf processor would not be able to
“perform an action in response to identifying the at least one object
descriptor that matches the first object descriptor,” as recited in claim 18.
Other than the functional language itself, claim 18 does not recite sufficient
structure, material, or acts for achieving the specified function. In particular,
the aforementioned limitation only recites that an action is performed “in
response to identifying the at least one object descriptor that matches the
first object descriptor,” and thus is merely a condition that is not structure,
material, or even an act. And finally, the term “processor” in claim 18 does
not include any structural modifiers.
Unlike a recited circuit coupled with a description of the circuit’s
operation in the claims, which has been found to connote sufficient structure
to avoid application of § 112, sixth paragraph, here the recited processor and
claim language does not recite anything to describe the “perform” operation.
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Accord MIT v. Abacus Software, 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 Comp., Inc., 325 F.3d 1364, 1374 (Fed. Cir. 2003).
Unlike the claims in Inventio AG v. ThyssenKrupp Elevator Americas
Corp., 649 F.3d 1350, 1359-60 (Fed. Cir. 2011), in which the claimed
“computing unit” that was held to connote sufficiently definite structure was
claimed to be connected to a modernizing device and to generate a
destination signal for transmission to the modernizing device and was
further claimed to be connected to floor terminals of the elevator system and
evaluate incoming call reports, destination floors, and identification codes to
generate the destination signal for processing by the modernizing device, the
claim here nakedly recites “a processor” without a modifier, the claim does
not recite structure other than being connected to a reader, which is not
sufficient for performing the recited function, and the claim does not recite,
and the written description does not delineate, the internal components of the
processor or in another way convey structure to skilled artisans to support a
conclusion that process is not a purely functional limitation (FF5-FF7).
And unlike a claimed control unit that further recited “a CPU and a
partitioned memory system” to provide sufficient structure to perform the
recited “controlling the communication unit” function and so avoid invoking
§ 112, sixth paragraph, see LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d
1364, 1372 (Fed. Cir. 2006), rev'd on other grounds, Quanta Computer, Inc.
v. LG Elecs., Inc., 553 U.S. 617 (2008), here the “perform” function is not a
function that can be executed solely by a general-purpose processor and a
reader.
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As such, we conclude that the term “processor” is a non-structural
term that would not be understood by a skilled artisan as having sufficiently
definite structure to perform the recited functions and, therefore, is used as a
substitute for the term “means for” and so invokes the application of § 112,
sixth paragraph.

Section 112, second paragraph
Given that “a processor adapted to” recited in independent claim 18
invokes § 112, sixth paragraph, the structure in the Specification
corresponding to a 35 U.S.C. § 112, sixth paragraph, claim limitation for a
processor-implemented function must include an algorithm, for performing
the recited function, that transforms the general purpose processor to a
special purpose processor programmed to perform the disclosed algorithm.
Aristocrat, 521 F.3d at 1333, 1338. The Specification must disclose an
algorithm that addresses each functional limitation. Default Proof Credit
Card Sys., Inc. v. Home Depot U.S.C., Inc., 412 F.3d 1291, 1298 (Fed. Cir.
2005) (“[w]hile corresponding structure need not include all things
necessary to enable the claimed invention to work, it must include all
structure that actually performs the recited function.” (citing Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir.
2002))). Accordingly, the Specification must disclose a sufficient algorithm
for all recited functional claim limitations, including “perform an action in
response to identifying the at least one object descriptor that matches the
first object descriptor,” as recited in independent claim 18.
The only portions of the Specification that disclose any details related
to “perform an action in response to identifying the at least one object
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descriptor that matches the first object descriptor” relates to prose describing
certain exemplary actions that may be performed in response to identifying a
match (FF8). However, these myriad of examples are, in effect, an
impermissible attempt to claim every way to “perform an action” under the
sun, and do not constitute a sequence of steps of a particular algorithm
required to meet the definiteness requirements of § 112, second paragraph.
ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 519 (Fed. Cir. 2012)
(“[t]here is no instruction for using a particular piece of hardware,
employing a specific source code, or following a particular algorithm. There
is therefore nothing in the specification to help cabin the scope of the
functional language in the means for processing element: The patentee has
in effect claimed everything that generates purchase orders under the sun.
The system claims are therefore indefinite.”); Blackboard, Inc. v.
Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009); Finistar, 523
F.3d at 1385 (quoting In re Freeman, 573 F.2d 1237, 1245–46 (CCPA
1978)) (“[e]ven described ‘in prose,’ an algorithm is still ‘a step-by-step
procedure for accomplishing a given result’”).
Accordingly, we find that independent claim 18 is indefinite because
the Specification fails to disclose corresponding structure for the means-
plus-function limitation “a processor adapted to . . . perform an action in
response to identifying the at least one object descriptor that matches the
first object descriptor”.

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Obviousness Rejection of Independent Claim 18
For the reasons discussed above, independent claim 18 is indefinite.
Therefore, we reverse, pro forma, the Examiner’s § 103(a) rejection of
independent claim 18 because it was necessarily based on speculation and
assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). Specifically, as there is no algorithm disclosed in the
Specification corresponding to “perform[ing] an action in response to
identifying [] at least one object descriptor that matches the first object
descriptor,” as recited in independent claim 18, there is no way to determine
whether any prior art discloses the same or equivalent structures to the
structure encompassed by claim 18 . Of course, if these claims were not
construed under § 112, sixth paragraph, and therefore were not indefinite
under § 112, second paragraph, we would sustain the Examiner’s § 103(a)
rejection of independent claim 18, which contains similar limitations to
independent claim 1, for which Appellant has not made separate, detailed
arguments.

DECISION
The Examiner’s rejection of claim 20 under 35 U.S.C. § 112, first
paragraph is REVERSED.
The Examiner’s rejection of claims 1, 3-17, 19, and 20 under 35
U.S.C. § 103(a) is AFFIRMED.
The Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a) is
REVERSED pro forma.
We newly reject claim 18 under 35 U.S.C. § 112, second paragraph,
for indefiniteness.
Appeal 2011-001143
Application 11/461,109

21
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board." Should Appellants elect to
prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1),
in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the affirmance is
deferred until conclusion of the prosecution before the Examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
Appeal 2011-001143
Application 11/461,109

22
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

ewh