Ex Parte Schneidereit et al

Board of Patent Appeals and Interferences

Mar 24, 2009

10518843 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUTZ SCHNEIDEREIT and WOLFGANG WIMMER
____________

Appeal 2009-0844
Application 10/518,843
Technology Center 2600
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Decided: March 24, 2009
____________

Before KENNETH W. HAIRSTON, ROBERT E. NAPPI, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

REMAND TO THE EXAMINER

We remand this application to the Examiner to resolve the following
issues:
(1) Whether 35 U.S.C. § 112, sixth paragraph has been invoked for
claim 8, and if so, whether the means plus function limitations in claim 8 are
definite under 35 U.S.C. § 112, second paragraph;
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(2) Whether claim 8 recites non-statutory descriptive material under
35 U.S.C. § 101;
(3) Whether claim 1 qualifies as a “process” under 35 U.S.C. § 101;
and
(4) Clarify the status of all claims on appeal in light of the Examiner’s
decision regarding the above issues.

DISCUSSION
The present application is remanded to the Examiner under 37 C.F.R.
§§ 41.35(b) and 41.50. At present, claim 17 stands rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter (Ans. 4-5). Because
claims 1-11, 15, 16, and 19-23 have been allowed and claim 18 has been
indicated as containing allowable subject matter if rewritten in independent
form (Ans. 3 and 5), we presume that the remaining rejections have been
withdrawn.

Claim 8
35 U.S.C. §§ 112, Second and Six Paragraphs
Upon review, the record before us does not clearly indicate whether
the Examiner followed the guidelines set forth in MPEP § 21811 with
respect to claim 8. In particular, the Examiner has not include a statement in
an Office Action that any of the limitations in claim 8 are being treated
under 35 U.S.C. § 112, six paragraph as set forth in MPEP § 2181(I). MPEP
§ 2181(I) explains that a claim limitation will be presumed to invoke 35

1 Manual of Patent Examining Procedure (MPEP), 8th ed., Rev. 6 (Sept.
2007)
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U.S.C. § 112, six paragraph if the following three-prong analysis has been
met: (1) the claim limitations must use the phrase, “means for;” (2) the
“means for” must be modified by functional language; and (3) the phrase
“means for” must not be modified by sufficient structure, material, or acts
for achieving the specified function. This analysis must be performed on an
element-by-element basis to determine if 35 U.S.C. § 112, six paragraph
applies.
Additionally, if 35 U.S.C. § 112, six paragraph has been invoked, the
Examiner must also decide whether the Appellants have complied with the
requirements of 35 U.S.C. § 112, second paragraph as set forth in MPEP
§ 2181(III). As discussed in this section of the Manual, when 35 U.S.C.
§ 112, six paragraph has been invoked, the requirements of 35 U.S.C. § 112,
second paragraph are complied with if the corresponding structure, material,
or acts are described in the Specification in specific terms and an ordinarily
skilled artisan could identify the structure, material, or acts from the
description. For example, if the Examiner determines that the phrase
“determining means for determining the item of start position information”
in claim 8 invokes 35 U.S.C. § 112, six paragraph, then the Examiner should
determine whether the Appellants have provided sufficient corresponding
structure to perform the function of determining the item of start position
information in the Specification in specific terms and an ordinarily skilled
artisan can identify the structure from the description. As a starting point,
the Specification describes a changer module 40 as the mechanism for
determining items of start position and that the features of the arrangement,
including the determining means for determining the item of start position
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information, are provided in a computer software product that comprises
software code (Spec. 6:23-24 and 3:18-4:2).
In performing the 35 U.S.C. § 112, second paragraph analysis, the
Examiner should also consider two recent cases, Aristocrat Tech. Australia
Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) and Finisar
Corp. v. The DirectTV Group, 523 F.3d 1323 (Fed. Cir. 2008). Both of
these cases relate to computer-implemented means-plus-function claim
limitations that invoke 35 U.S.C. § 112, sixth paragraph. In Aristocrat, the
court stated that the corresponding structure in the specification must be
more than a general purpose computer or microprocessor with appropriate
programming to satisfy the definiteness requirements of 35 U.S.C. § 112,
second paragraph. Id. at 1333-34. This is because a general purpose
computer or microprocessor can be programmed to perform very different
tasks and does not limit the scope of the claim to any particular structure that
performs the function. Id. at 1333. In Finisar, the court explained that
reciting software without providing some detail about the means to
accomplish the function does not adequately disclose the corresponding
structure that define the bounds of the invention. Finisar, 523 F.3d at 1340-
41.
We also note, for every independent claim involved in the appeal, 37
C.F.R. § 41.37(c)(1)(v) requires that “every means plus function . . . as
permitted by 35 U.S.C. § 112, sixth paragraph must be identified and the
structure, material, or acts described in the specification as corresponding to
each claimed function must be set forth with reference to the specification
by page and line number, and to the drawing, if any, by reference
characters.” In the present appeal, for nearly every limitation that includes
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“means for” language in claim 8, Appellants refer us to a portion of the
Specification that uses the identical language found in claim 8. See Br. 3-4
and Spec. 3:18-28. For example, Appellants refer to page three, lines 18 to
28 for support for a “determining means for determining the item of start
position information,” a “gating means for generating the identification data
block by the gating of part identification blocks,” and a “second generating
means for generating a second part identification block form a total for the
number of tracks on the data carrier” (Br. 3-4). If 35 U.S.C. § 112, sixth
paragraph has been invoked, this disclosure is clearly inadequate to describe
the corresponding structures to perform the above-quoted specific functions
or to determine the metes and bounds of these limitations.
In summary, we have little guidance from the Examiner or Appellants
whether the “means for” limitations in claim 8 have invoked 35 U.S.C.
§ 112, sixth paragraph, and, if so, whether the means plus function
limitations are definite under 35 U.S.C. § 112, second paragraph.

35 U.S.C. § 101
The Examiner must additionally consider whether claim 8 recites
purely descriptive material that is nonstatutory under 35 U.S.C. § 101. As
MPEP § 2106.01 explains, descriptive material can be characterized as
either functional or nonfunctional descriptive material. Functional
descriptive material includes data structures and computer programs which
impart functionality when employed as a computer component, and
nonfunctional descriptive material includes a compilation or mere
arrangement of data. See MPEP § 2106.01. Both of these types of
descriptive material can be nonstatutory. Id.
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Claim 8 recites an arrangement comprising a determining means for
determining the item of start position information, a gating means for
generating the identification data block by gating of part identification
blocks, a first generating means for generating a first part identification
block from the items of start position information, and a second generating
means for generating a second part identification block from a total for the
number of tracks on the data carrier. Along with other discussions (Spec.
6:23-30), the Specification indicates that the arrangement can be a computer
software product comprised of software code sections (Spec. 3:8-4:1). If the
Examiner determines the arrangement is functional descriptive material, the
Examiner must decide whether the material is recorded on some
computer-readable medium, such that its functionality is realized, and the
claim is, therefore, statutory under § 101. See MPEP §§ 2106.01 and
2106.01(I). If not, the Examiner must consider if claim 8 recites purely
nonfunctional descriptive material. In this case, even if the descriptive
material is recorded on a computer-readable medium, the claim cannot be
statutory under 35 U.S.C. § 101. See MPEP §§ 2106.01 and 2106.01(II).

Claim 1
Claim 1 recites a method of generating an identification data block by
performing an XOR gating operation on items within parts of the data block.
Using the analysis under the recent decision, In re Bilski, 545 F.3d 943 (Fed.
Cir. 2008)(en banc), the Examiner must determine whether claim 1 qualifies
a “process” under 35 U.S.C. § 101. “A claimed process is surely
patent-eligible under § 101 if: (1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article into a different state or
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thing.” Id. at 954. Using this analysis, commonly referred to as the
machine-or-transformation test, the Examiner must decide whether claim 1
is tied to a particular machine and not just a general purpose computer. Id.
at 955; Gottshalk v. Benson, 409 U.S. 63, 71-72 (1972). If no particular
machine has been claimed, the Examiner must also determine whether the
claim transforms an article into a different state or thing. Bilski, 545 F.3d at
962-63. For example, the court in Bilski noted that gathering data would not
constitute a transformation of any article as required by the transformation
prong of the machine-or-transformation test. Id. at 963. Thus, such a step
would not transform an article into a different state or thing and would not
qualify as a statutory process under 35 U.S.C. § 101.
As such, we remand the case to the Examiner to clarify the record as
to whether any of the “means for” limitations in claim 8 invoke 35 U.S.C.
§ 112, sixth paragraph and whether the Specification provides sufficient
corresponding structure, and one skilled in the art could identify the
structure to satisfy the definiteness requirement under 35 U.S.C. § 112,
second paragraph. To this end, the Examiner may wish to inquire with
Appellants regarding the corresponding structure, material, or acts via a
Requirement for Information under 37 C.F.R. § 1.105 should further
prosecution follow this remand. See MPEP §§ 704.10-14.2 After
determining the scope of claim 8 in light of whether 35 U.S.C. § 112, sixth

2 See also Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1283 (Fed. Cir.
2005) (“The [USPTO] is clearly entitled to use section 1.105 to seek
information that may support a rejection. Just as the applicant produces
information it deems pertinent to patentability under section 1.56, the
examiner is free to request information under section 1.105 that the
examiner deems pertinent to the issue of patentability.”).
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paragraph has been invoked and determining the corresponding structure for
any means-plus-function limitations, the Examiner must then reevaluate
patentability of the claims and consider whether claim 8 recites statutory
subject matter under 35 U.S.C. § 101. Additionally, the Examiner must
consider whether claim 1 recites patent-eligible subject matter under 35
U.S.C. § 101.3
If the Examiner decides to maintain the ground of rejection previously
presented in the Answer, then the Examiner must issue a Supplemental
Examiner’s Answer setting forth such grounds. The Examiner is reminded
that no new grounds of rejection are permitted in a Supplemental Answer
that is responsive to this type of remand. See MPEP § 1207.05(C); see also
MPEP § 1207.05(III).
Therefore, we remand this application to the Examiner to resolve
these issues, and if necessary, compel the Appellants under 37 C.F.R § 1.105
to provide any necessary information.

DECISION
The present application on appeal is remanded to the Examiner for
appropriate action in accordance with the foregoing instructions.
Because this application has a “special” status, it requires immediate
action. See MPEP § 708.01(D). The Board must be informed promptly of
any action affecting the appeal in this case.

3 In remanding this case, we have only addressed independent claims 1 and
8. If, however, the Examiner decides that these claims should now be
rejected, the Examiner should also address the claims dependent upon claims
1 and 8.
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REMANDED

ELD

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