Ex Parte Lonski et alDownload PDFBoard of Patent Appeals and InterferencesAug 24, 200910041312 (B.P.A.I. Aug. 24, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL LONSKI and PHIL BURKE ____________ Appeal 2009-003010 Application 10/041,312 Technology Center 3600 ____________ Decided:August 24, 2009 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-003010 Application 10/041,312 STATEMENT OF THE CASE Michael Lonski, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 24-26, 35, and 39. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE but add a new ground of rejection under 35 U.S.C. § 112, second paragraph.1 THE INVENTION The invention relates to the automating of the gathering of information. The claimed invention is presented in apparatus claims 24, 25, 26, and 35 and process claim 39. Claim 24, reproduced below, is illustrative of the subject matter on appeal. 24. An apparatus for providing historic documentation and prospective treatment or intervention advice for a plurality of persons receiving treatment or intervention, comprising: means for automated collecting and recording of data for the persons, said data being in a plurality of categories, each of said plurality of categories including historic and prospective information; means for choosing a subset of at least two categories from said plurality of categories; means for storing a database comprising textual data corresponding to a plurality of possible data, said data including prospective treatment or intervention advice; 1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,” filed Aug. 27, 2007; corrected Oct. 2, 2007) and the Examiner’s Answer (“Answer,” mailed Jan. 10, 2008). Appeal 2009-003010 Application 10/041,312 3 means for referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice; and means for combining said portion of said textual data with data including historic data from said means for automated collecting and recording thereby automatically generating at least one report. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Iliff Donoho US 6,113,540 US 6,604,130 B2 Sep. 5, 2000 Aug. 5, 2003 Merriam-Webster’s Collegiate Dictionary, 10th edition, Definition of pseudo-random. The following rejections are before us for review: 1. Claims 24-26 and 39 are rejected under 35 U.S.C. §102(e) as being anticipated by Iliff. 2. Claim 35 are rejected under 35 U.S.C. §103(a) as being unpatentable over Iliff and Donoho. PRINCIPLES OF LAW Means-plus-function claim language must be construed in accordance with 35 U.S.C. § 112, paragraph 6, by “look[ing] to the specification and interpret[ing] that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). Appeal 2009-003010 Application 10/041,312 4 When no structure is described in the Specification to support a means-plus-function limitation in a claim, the disclosure is inadequate to explain to one of ordinary skill in the art what is meant by the claim language. In such a situation, a means-plus-function claim would not be amenable to construction and thus would fail to particularly point out and distinctly claim the invention as required by the second paragraph of section 112. [I]f one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.’ In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). “This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6. B.Braun Medical v Abbott Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997). See also O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997). ‘Fulfillment of the § 112, ¶ 6 trade-off cannot be satisfied when there is a total omission of structure.’ Atmel [Corp. v. Info. Storage Devices, 198 F.3d 1374, 1382 (Fed. Cir. 1999)]. While 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. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). When the means-plus-function limitation in a claim is a computer- enabled means-plus-function limitation, one must set forth in the specification sufficient description of an algorithm associated with the function recited in the claim in order to avoid a finding that an applicant has Appeal 2009-003010 Application 10/041,312 5 failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112. It is certainly true that the sufficiency of the disclosure of algorithmic structure must be judged in light of what one of ordinary skill in the art would understand the disclosure to impart. See, e.g., Intel Corp. v. VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003) (knowledge of a person of ordinary skill in the art can be used to make clear how to implement a disclosed algorithm); Atmel Corp., 198 F.3d at 1379 (“[T]he ‘one skilled in the art’ analysis should apply in determining whether sufficient structure has been disclosed to support a means-plus-function limitation.”). That principle, however, has no application here, because in this case there was no algorithm at all disclosed in the specification. The question thus is not whether the algorithm that was disclosed was described with sufficient specificity, but whether an algorithm was disclosed at all. Aristocrat Techs. Australia Party. Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008). When there is insufficient description of an algorithm in the Specification to support a computer-enabled means-plus-function limitation in a claim, the disclosure will be considered inadequate to explain to one of ordinary skill in the art what is meant by the claim language. For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int'l Appeal 2009-003010 Application 10/041,312 6 Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Thus the patent must disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6. This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, see In re Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a flow chart, or in any other manner that provides sufficient structure. [new ¶] The district court correctly determined that the structure recited in the ′505 specification does not even meet the minimal disclosure necessary to make the claims definite. Simply reciting “software” without providing some detail about the means to accomplish the function is not enough. See Aristocrat Techs. Austl. Pty v. Int'l Game Tech., 521 F.3d 1328, ---- (Fed. Cir. 2008) (“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.”). This court does not impose a lofty standard in its indefiniteness cases. See, e.g., Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1214 (Fed. Cir. 2003). But in this case, the claims are already quite vague. Without any corresponding structure, one of skill simply cannot perceive the bounds of the invention. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008). When a Specification discloses no algorithm corresponding to a computer-enabled means-plus-function limitation in a claim, an applicant has necessarily failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112. See also Appeal 2009-003010 Application 10/041,312 7 Aristocrat, 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005) (“‘[t]he corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.’”); Net MoneyIN, Inc. v. Verisign, Inc. 545 F.3d 1359 (Fed. Cir. 2008) (“[A] means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function.”). See also Blackboard, Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2d 1481 (Fed. Cir. 2009) (finding Blackboard’s means-plus-function claims indefinite because the patent describes an undefined component, i.e., a black box, that performs the recited function but does not disclose how the component performs the function). See further Ex parte Catlin, 90 USPQ2d 1603 (BPAI 2009) (precedential) (during prosecution, computer-enabled means-plus-function claims will be held unpatentable under 35 U.S.C. § 112, second paragraph, as being indefinite if a Specification fails to disclose any algorithm corresponding to the recited function in the claims). ANALYSIS We will reverse the rejections of claims 24-26 and 39 under §102(e) as being anticipated by Iliff and claim 35 under §103(a) as being unpatentable over Iliff and Donoho. Regarding apparatus claims 24-26 and 35, as further explained below, we will enter a new ground of rejection of these claims under 35 U.S.C. § 112, second paragraph, because they are indefinite. Therefore, their rejection over prior art must fall, pro forma, as being necessarily based on speculative Appeal 2009-003010 Application 10/041,312 8 assumptions as to the scope of these claims. See In re Steele, 305 F.2d 859, 826-63 (CCPA 1962). Our decision in this regard is based solely on the indefiniteness of the subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the rejections Regarding process claim 39, we find the Examiner has not presented a prima facie case of anticipation. The Examiner included claim 39 in a discussion directed to all the claims and stated “[c]laim 39 is considered a parallel claim and is rejected for the same rational (sic, rationale).” Answer 6. However, like the apparatus claims, it includes means-plus-function language and this language must first be construed, in accordance with 35 U.S.C. § 112, paragraph 6, if invoked, before a determination can be made as to whether the prior art anticipates the claimed subject matter. This was not done. Anticipation is determined by first construing the claims and then comparing the properly construed claims to the prior art. In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002). A determination that a claim is anticipated under 35 U.S.C. § 102(b) involves two analytical steps. First, the Board must interpret the claim language, where necessary. Because the PTO is entitled to give claims their broadest reasonable interpretation, our review of the Board's claim construction is limited to determining whether it was reasonable. In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board must compare the construed claim to a prior art reference and make factual findings that “each and every limitation is found either expressly or inherently in [that] single prior art Appeal 2009-003010 Application 10/041,312 9 reference.” Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998). In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Given that the means- plus-function language has not been addressed, the scope and meaning of that limitation, as well as the claim as a whole, has not been determined. Accordingly, the prior art disclosure was not compared to the claimed subject matter given the claim’s broadest reasonable construction. As a result, the Examiner did not meet the initial burden of establishing a prima facie case of anticipation for the subject matter of claim 39 over Iliff. Cf. Gechter v. Davidson, 116 F.3d 1454, 1457-1460 (Fed. Cir. 1997). NEW GROUND Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection. We reject claims 24-26 and 35 under 35 U.S.C. § 112, second paragraph as being indefinite. We take claim 24 as representative. We count five limitations in claim 24 which are in means-plus- function format. We will focus on the limitation “means for referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice.” But the analysis to follow applies equally as well to the other four means-plus-function limitations. The limitation “means for referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice” includes the term “means.” A claim limitation that includes the term “means” is presumed to Appeal 2009-003010 Application 10/041,312 10 be intended to invoke means-plus-function treatment, i.e., treatment under 35 U.S.C. §112, 6th paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999). Construing means-plus-function claim language in accordance with 35 U.S.C. § 112, paragraph 6, is a two step process. The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001). “The court must construe the function of a means-plus- function limitation to include the limitations contained in the claim language, and only those limitations.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002)…. The next step in construing a means- plus-function claim limitation is to look to the specification and identify the corresponding structure for that function. “Under this second step, ‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.’” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (quoting B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). Step 1.The first step in construing a means-plus-function claim limitation is to define the particular function in the means-plus-function limitation. The particular function of the means-plus-function claim limitation at issue is “referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice.” App. Br. 3. Appeal 2009-003010 Application 10/041,312 11 Further, one of ordinary skill in the art would construe the claim limitation “means for referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice” (App. Br. 3) to refer to a computer-enabled means-plus-function limitation, although the term “computer” is not recited in claim 24. A plain reading of claim 24 would lead one of ordinary skill to understand the claim to be drawn to an apparatus capable of processing data involving a database. Further, given that the Specification discloses implementing aspects of a general purpose computer as the only structure for implementing the system as claimed, one of ordinary skill in the art would understand the function recited in claim 24 as involving the use of a computer. See Specification, p. 7, ll. 12-19. Accordingly, though claim 24 does not expressly recite the term “computer,” we find that the broadest reasonable construction of the claim in light of the Specification as it would be interpreted by one of ordinary skill in the art is that the “apparatus” as claimed is computer-enabled. Step 2. The next step in construing a means-plus-function claim limitation is to look to the Specification and identify the corresponding structure for that function. Given that the claim limitation “means for referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice” (App. Br. 3) is a computer-enabled means- plus-function limitation. This requires looking to the Specification and identifying the algorithm corresponding to the function “referencing into said database by said data in said subset of at least two categories thereby Appeal 2009-003010 Application 10/041,312 12 selecting a portion of said textual data including prospective treatment advice.” App. Br. 3 and 8. See also Blackboard, Net MoneyIN, Finisar, Aristocrat, and Catlin, supra. In that regard, we note that in the Summary of the Claimed Subject Matter (App. Br. 3) the Appellant has attempted to show where in the Specification, by page and line number, there is disclosed structure, material, or acts corresponding to each claimed function as required by 37 C.F.R. § 41.37(c)(1)(v) (2007). As to the function at issue, the Appellant directs attention to p. 32, l. 18 to p. 33, l. 12 of the Specification and Fig. 8. App. Br. 3. We have reviewed these disclosures but have not been able to discern the algorithm corresponding to the function “referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice.” The disclosure, at p. 32, l. 18 to p. 33, l. 12, of the Specification, explains what the invention is expected to do. In effect, the Specification repeats, in different words, the function at issue. The only mention of an algorithm is in the Specification at ll. 8-9 of p. 33, where it is disclosed that “a randomizing algorithm 465 as shown in Figure 8 selects two items from each of the five factors from items 445, 450, and 455 then selects two factors from 460.” Looking at Fig. 8, we see a box 465 but no algorithm. The text in box 465 states “Use Randomizing Algorithm to Select Treatment Plan Factors.” This statement describes the purpose or function of applying a “randomizing algorithm” but it does not tell us anything about the structure of the algorithm itself that would cause the recited function to be performed. Also, there is no evidence Appeal 2009-003010 Application 10/041,312 13 on the record that one of ordinary skill in the art at the time of the invention would have understood what this algorithm would be. Moreover, it is not clear as to whether the “Randomizing Algorithm” is meant to correspond to the entirety of the claim function “referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice” or just to a part of it. Given all this, we find that the Specification does not adequately describe an algorithm corresponding to the function “referencing into said database by said data in said subset of at least two categories thereby selecting a portion of said textual data including prospective treatment advice” such that one of ordinary skill in the art could determine the scope of claim 24. Therefore, we reject claim 24 under 35 U.S.C. § 112, second paragraph as being indefinite. Claims 25, 26, and 35 depend from claim 24 and therefore include the same deficiency. (Claim 35 is also in means-plus- function format.) Thus, claims 25, 26, and 35 are also rejected under 35 U.S.C. § 112, second paragraph as being indefinite. CONCLUSION We conclude that the Examiner erred in rejecting claims 24-26 and 39 under 35 U.S.C. §102(e) as being anticipated by Iliff and claim 35 under 35 U.S.C. §103(a) as being unpatentable over Iliff and Donoho. . Appeal 2009-003010 Application 10/041,312 14 DECISION The decision of the Examiner to reject claims 24-26, 35, and 39 is reversed and we enter a new ground of rejection of claims 24-26 and 35 under 35 U.S.C. § 112, second paragraph. This decision contains new grounds 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 the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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 . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). REVERSED; 37 C.F.R. § 41.50(b) mev Appeal 2009-003010 Application 10/041,312 15 DAY PITNEY LLP 7 TIMES SQUARE NEW YORK NY 10036-7311 Copy with citationCopy as parenthetical citation