Ex Parte Lonski et al

Board of Patent Appeals and Interferences

Aug 24, 2009

10041312 (B.P.A.I. Aug. 24, 2009)

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
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Decided:August 24, 2009
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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).
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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).
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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
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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
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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
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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
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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
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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
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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.
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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
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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
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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.
.

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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
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