Ex Parte Sundel

Board of Patent Appeals and Interferences

Aug 3, 2009

09996825 (B.P.A.I. Aug. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL B. SUNDEL
____________

Appeal 2008-004541
Application 09/996,825
Technology Center 3600
____________

Decided: August 3, 2009
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on February 10, 2009.
STATEMENT OF THE CASE
Michael B. Sundel (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1, 2, 4-11, 23-31, 33, 34, and
36-51. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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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 an improved shipping method and system for
facilitating shipments and management thereof, and more particularly to
such a system and method for facilitating a shipment of a package of items
from a Sender to a Recipient through one of a multitude of shipping
mechanisms.” Specification [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for processing
shipment and return of a package containing items
from a Sender to a Recipient, the method
comprising the steps of:
electronically storing package data, for the
package, and including item data, for the items in
the package, in a database, before shipment occurs;
electronically retrieving shipment tracking
data, for tracking shipment of the package from the
Sender to the Recipient and return of one or more
items of the items of the package from the
Recipient to the Sender, from a shipping
mechanism;
electronically adding the shipment tracking
data to the database;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Aug. 24, 2007) and Reply Brief (“Reply Br.,” filed Feb. 26,
2008), and the Examiner’s Answer (“Answer,” mailed Dec. 26, 2007).
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electronically correlating the package data in
the database with the shipment tracking data for
the package;
electronically determining whether the
package requires customs clearance and, if so,
electronically generating the appropriate customs
documentation or data transmission to a customs
broker;
permitting an authorized user to query the
database for processing the shipment of the
package from the Sender to the Recipient and the
return from the Recipient to the Sender of the one
or more items of the items of the package; and
rendering data for display to the authorized
user, based on a query of the database for shipping
parameters of the package from the Sender to the
Recipient and return from the Recipient to the
Sender of the one or more items of the items of the
package.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Williams
Le
US 2002/0032612 A1
US 2003/0069831 A1
Mar. 14, 2002
Apr. 10, 2003

The following rejections are before us for review:
1. Claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 are rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
2. Claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to
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particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
3. Claims 33, 34, and 36-51 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter because “[c]laims 33, 34[,]
and 36-51 of the disclosed invention are inoperative and therefore lack
utility.” Answer 4.
4. Claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Williams and Le.

ISSUES
1. Does the Specification fail to provide written descriptive support for
the subject matter claimed in claims 1, 2, 4-11, 23-31, 33, 34, and 36-
51 for the reasons stated by the Examiner?
2. Are claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 indefinite for the
reasons stated by the Examiner?
3. Are claims 33, 34, and 36-51 directed to non-statutory subject matter
because they lack utility?
4. Does the combination of Williams and Le lead one of ordinary skill in
the art to the subject matter claimed in claims 1, 2, 4-11, and 23-31;
specifically, does Williams disclose the claim limitation
“electronically storing package data, for the package, and including
item data, for the items in the package, in a database, before shipment
occurs” at [0148]-[0150], [0375], Figures 27A, and 40, as the
Examiner has argued?

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PRINCIPLES OF LAW
Utility
The test for utility is whether the application shows that the invention
is useful to the public as disclosed. “Simply put, to satisfy the ‘substantial’
utility requirement, an asserted use must show that that claimed invention
has a significant and presently available benefit to the public.” In re Fisher,
421 F.3d 1365, 1371 (Fed. Cir. 2005). “When a properly claimed invention
meets at least one stated objective, utility under § 101 is clearly shown.”
Raytheon Co. v. Roper Corp., 724 F.2d 951, 958-59 (Fed. Cir. 1983). The
test for operability is whether one of ordinary skill in the art would
reasonably doubt the asserted utility.
As a matter of Patent Office practice, a
specification which contains a disclosure of utility
which corresponds in scope to the subject matter
sought to be patented must be taken as sufficient to
satisfy the utility requirement of § 101 for the
entire claimed subject matter unless there is reason
for one skilled in the art to question the objective
truth of the statement of utility or its scope.
Assuming that sufficient reason to question the
statement of utility and its scope does exist, a
rejection for lack of utility under § 101 will be
proper on that basis; such a rejection can be
overcome by suitable proofs indicating that the
statement of utility and its scope as found in the
specification are true.
In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974) (emphasis added).
Definiteness
The test for compliance is whether the claims set out and circumscribe
a particular area with a reasonable degree of precision and particularity when
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read in light of the application disclosure as they would be interpreted by
one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
Written Description
“What is claimed by the patent application must be the same as what
is disclosed in the specification; otherwise the patent should not issue.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736
(2002). All that is necessary to satisfy the description requirement is to
show that one is “in possession” of the invention. The decision in Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the
test.
One shows that one is ‘in possession’ of the
invention by describing the invention, with all its
claimed limitations, not that which makes it
obvious. Id. (“[T]he applicant must also convey to
those skilled in the art that, as of the filing date
sought, he or she was in possession of the
invention. The invention is, for purposes of the
‘written description’ inquiry, whatever is now
claimed.”) (emphasis in original). One does that
by such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set
forth the claimed invention. Although the exact
terms need not be used in haec verba, see
Eiselstein v. Frank, 52 F.3d 1035, 1038 . . . (Fed.
Cir. 1995) (“[T]he prior application need not
describe the claimed subject matter in exactly the
same terms as used in the claims . . . . ”), the
specification must contain an equivalent
description of the claimed subject matter.
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Lockwood, 107 F.3d at 1572 (emphasis original). Compliance with the
written description requirement is a question of fact. Ralston Purina Co. v.
Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
Obviousness
Section 103 forbids issuance of a patent
when “the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” 383 U.S. at 17-18.

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ANALYSIS
The rejection of claims 33, 34, and 36-51 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter because “[c]laims 33, 34[,] and 36-
51 of the disclosed invention are inoperative and therefore lack utility.”
Answer 4.
The Examiner’s reason for finding the claims lack utility is that the
claims
[m]erely recite elements of an apparatus or a
system (“means for” corresponds to software
program elements and not [to] tangible hardware
components) without showing any ability to realize
functionality of the recited elements (i.e.[,]
functional descriptive material per se) and
therefore is rendered inoperative lacking any
utility. Figure 6 of the applicant’s drawings only
shows some hardware elements of the system. It is
not clear how these elements are related to the
claimed invention. Applicant has not shown how
these hardware elements map on to the limitations
of the claimed invention.
Note that a computer (or software program)
code cannot by itself perform the underlying
function until it is loaded on some computer
readable memory and accessed by the computer
(or a processor). Functional descriptive material,
per se, is not statutory. This is exemplified in In re
Warmerdam[,]31 USPQ2d 1754 where the
rejection of a claim to a disembodied data structure
was affirmed. Thus a claim to a data structure, per
se, or other functional descriptive material,
including computer programs, per se, is not patent
eligible subject matter.
Answer 4-5. The Examiner also states that
the examiner has broadly interpreted the claim as
being drawn to elements of an apparatus or a
system (“means for” corresponds to software
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program elements and not tangible hardware
components) without showing any ability to realize
functionality of the recited elements (i.e.[,]
functional descriptive material per se) and
therefore is rendered inoperative lacking any
utility. The examiner has not applied the
provisions of 35 [U.S.C. § ]112, sixth paragraph in
interpreting this claim because there is too much
structure in the means plus function.
Answer 10.
The precise question before us is whether claims 33, 34, and 36-51 are
directed to non-statutory subject matter because they lack utility. In that
regard, we do not see that the Examiner has explained in what way the
claimed subject matter fails to achieve a useful result. “To violate
[35 U.S.C.] § 101 the claimed device must be totally incapable of achieving
a useful result.” Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d
1555, 1571 (Fed. Cir. 1992). The Specification explains that the method and
system of the invention is for “facilitating shipments and management
thereof” (Specification [0001]). Therefore the Appellant does appear to
have provided disclosure of a useful result for the claimed subject matter.
The record therefore appears to support the view that the claimed subject
matter is drawn to a method and system for achieving the facilitation of
shipments and management thereof. The Examiner does not explain in what
way the claimed subject matter would be incapable of doing this.
Accordingly, the Examiner has failed to establish a prima facie case that the
subject matter of claims being rejected are directed to nonstatutory subject
matter in violation of 35 U.S.C. § 101 on the ground that they lack utility.
While we do not see that the Examiner has explained in what way the
claimed subject matter fails to achieve a useful result, we do see that the
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Examiner has struggled to determine whether the claimed subject matter is
directed to patent-eligible subject matter in compliance with 35 U.S.C.
§ 101. That struggle has led the Examiner to find claims 33, 34, and 36-51
to define only purely functional subject matter. If this finding were correct,
we would agree that the claims define nonpatentable subject matter. See,
e.g., Expanded Metal Co. v. Bradford, 214 U.S. 366, 383 (1909) (“It is
undoubtedly true, and all the cases agree, that the mere function or effect of
the operation of a machine cannot be the subject-matter of a lawful patent.”)
But such a finding presumes the claims have been given the broadest
reasonable construction in light of the Specification as they would be
interpreted by one of ordinary skill in the art and that that construction leads
to the conclusion that what is claimed in claims 33, 34, and 36-51 is
nonstatutory subject matter. “[W]hether the ... patent is invalid for failure to
claim statutory subject matter under § 101[ ] is a matter of both claim
construction and statutory construction,” State St. Bank & Trust Co. v.
Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998). We do not see
here that the Examiner has made the appropriate claim construction analysis
to support the finding the Examiner has made.
Claims 33, 34, and 36-51 are directed to “computer-implemented”
systems and are in means-plus-function format. As such, there is a
presumption that the Appellant intended to invoke treatment under 35 U.S.C.
§ 112, sixth paragraph. It was thus incumbent on the Examiner to first
address that presumption and, if that presumption is not overcome, to
construe the claims by giving them that treatment before reaching the
question of statutory subject matter.
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We note that the Examiner decided not to treat the claims under 35
U.S.C. § 112, sixth paragraph, because “there is too much structure in the
means plus function” (Answer 10). While it is true that the presumption to
invoke means-plus-function treatment under 35 U.S.C. § 112, sixth
paragraph, may be rebutted when sufficient structure for performing the
recited function is recited in the “means” limitation of the claims (see Cole
v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996)), the Examiner
does not explain what in the claims constitutes sufficient structure to rebut
that presumption. Our reading of the claims reveals no recitation of any
structure. What we read instead are means-plus-function limitations reciting
nothing but the functions that each of the “means” must perform. Thus we
disagree with the Examiner that the presumption that the Appellant intended
to invoke means-plus-function treatment under 35 U.S.C. § 112, sixth
paragraph, was rebutted.
However, we do agree that these claims raise a question of
patentability. But that question is not at present one of statutory subject
matter but rather a question of definiteness under the second paragraph of 35
U.S.C. § 112. The question is whether claims 33, 34, and 36-51 recite purely
functional subject matter such that, structurally-speaking, the metes and
bounds of the claims can not be determined by one of ordinary skill in the
art. That question is addressed in the new ground of rejection, infra.

The rejection of claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
The reason the Examiner gives for making this rejection is that “the
specification does not provide a written description disclosure to support the
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claimed limitation of ‘electronically storing package data, for the package,
and including item data, for the items in the package, in a database, before
shipment occurs.’” Answer 3 (emphasis original), referring e.g., to the first
step in claim 1.
We disagree. Figure 3 and the accompanying discussion at [0028]
describe actions conducted with respect to the package before the package is
shipped. They included obtaining package data and putting that data in a
database. We find this disclosure sufficient to show that the Specification
contains an equivalent description for the claim limitation “electronically
storing package data ... in a database, before shipment occurs.”

The rejection of claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention.
The reason given for this rejection is that “the limitation ‘tracking
shipment of the package from the Sender to the Recipient and return of one
or more items of the items of the package from the Recipient to the Sender’
[in claims 1 and 33] ... [has] no antecedent basis ... because the shipment or
return of the package has not been positively recited before this limitation.”
Answer 3-4. According to the Examiner, [t]here is no antecedent basis for
this limitation because the shipment or return of the package has not been
positively recited before this limitation. In fact it is not clear at what step of
the method the shipment or return of the package occurs and hence it is not
clear as to when the shipment tracking data is generated.” Answer 10
(emphasis added).
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The Examiner is correct that a lack of antecedence in a claim may be
a basis for raising a question of definiteness under the second paragraph of
35 U.S.C. § 112. “Lack of [an] antecedent basis in a claim could render it
invalid under 35 U.S.C. § 112.” In re Altenpohl, 500 F.2d 1151, 1156
(CCPA 1974) (emphasis added). However, antecedent basis can be present
by implication. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d
1113, 1116 (Fed. Cir. 1987). Explicit antecedence is not required if the
scope of a claim can be reasonably ascertainable. Cf. Energizer Holdings,
Inc. v. United States ITC, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006). “In
Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001) the court held
that despite the absence of explicit antecedent basis, ‘[i]f the scope of a
claim would be reasonably ascertainable by those skilled in the art, then the
claim is not indefinite.’”
Taking claim 1 as representative, the limitation “tracking shipment of
the package from the Sender to the Recipient and return of one or more
items of the items of the package from the Recipient to the Sender” follows
the recitation in the preamble that the method is for “processing shipment
and return of a package containing items from a Sender to a Recipient” and a
step of storing package data, including item data, before shipment occurs.
These recitations imply to one of ordinary skill in the art plainly reading the
claim that the process claimed includes package and item shipment and
return between Sender and Recipient as necessary preliminary steps to their
tracking. If they are not shipped and returned, they cannot be tracked.
Accordingly, in this situation, explicit antecedence “the shipment or return
of the package” (Answer 10) is not required because it is implied by the
claim as a whole.
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As for the statement in the Answer “it is not clear at what step of the
method the shipment or return of the package occurs and hence it is not clear
as to when the shipment tracking data is generated” (Answer 10), we make
this observation. By this statement, the Examiner appears to be arguing that
the claim is indefinite because the claims do not further define the timing for
tracking a package in relation to the package’s shipment and return.
However, it appears to be clear from reading the claims that they describe
tracking a package during package shipment and return. This may be broad.
But breadth is not indefiniteness. Cf. In re Robins, 429 F.2d 452, 458
(CCPA 1970) (“Giving the language its broadest possible meaning, as we
are bound to do in the absence of special definitions by appellant, the
breadth of the claims insofar as the catalyst is concerned is indeed immense.
However, ‘[b]readth is not indefiniteness.’ In re Gardner, 427 F.2d 786,
788 (1970).”).

The rejection of claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 under 35 U.S.C.
§ 103(a) as being unpatentable over Williams and Le.
Claims 1, 2, 4-11, 23-31
We will reverse the rejection of the method claims 1, 2, 4-11, and 23-
31 under § 103 as being unpatentable over Williams and Le.
There is no dispute that Le discloses the claim step of electronically
determining whether the package requires customs clearance and, if so,
electronically generating the appropriate customs documentation or data
transmission to a customs broker. The dispute is over the scope and content
of Williams; more specifically, whether Williams discloses all the other
steps in the claims. For claim 1, the other steps (with the corresponding
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disclosures in Williams that the Examiner (Answer 5-6) relied on as
evidence that Williams discloses these steps) are:
• “electronically storing package data, for the
package, and including item data, for the items
in the package, in a database, before shipment
occurs” ([0148]-[0150], [0375], Figures 27A,
and 40);
• “electronically retrieving shipment tracking
data, for tracking shipment of the package from
the Sender to the Recipient and return of one or
more items of the items of the package from the
Recipient to the Sender, from a shipping
mechanism” ([0148]-[0152], [0375]);
• “electronically adding the shipment tracking
data to the database” ([0148]-[0152]);
• “electronically correlating the package data in
the database with the shipment tracking data for
the package” ([0149], [0455]-[0472]);
• “permitting an authorized user to query the
database for processing the shipment of the
package from the Sender to the Recipient and
the return from the Recipient to the Sender of
the one or more items of the items of the
package” ([0028], [0030], [0133], [0136],
[0152], and, [0375]-[0410]); and,
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• “rendering data for display to the authorized
user, based on a query of the database for
shipping parameters of the package from the
Sender to the Recipient and return from the
Recipient to the Sender of the one or more
items of the items of the package” ([0028],
[0030], [0133], [0136], [0152], and, [0375]-
[0410]).
The Appellant argues that Williams does not disclose all the features
of the claims. App. Br. 9. According to the Appellant, “Williams appears to
disclose a return tracking system where item data is stored upon the return
of the item by the Recipient. Advantageously, the Appellant’s invention is
distinct from Williams because individual items within a package are
tracked before being shipped by the Sender. (See Specification ¶ 17).”
App. Br. 10.
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The Examiner disagreed, responding that
there is nothing in paragraph 17 of the Applicant’s
specification to suggest that individual items
within a package are tracked before being shipped
by the Sender. [Further] Williams discloses a
computer-implemented method for processing
shipment and return of a package containing items
from a Sender to a Recipient (See the disclosure of
Williams including the portions cited in the
rejections). The limitations “sender” and
“recipients” are given the broadest possible
interpretation to include the “person who sends”
and “the person who receives” regardless of
whether the item is shipped for the first time or is
being returned.
Answer 12.
Accordingly, the issue is whether Williams discloses the claim
limitation “electronically storing package data, for the package, and
including item data, for the items in the package, in a database, before
shipment occurs” at [0148]-[0150], [0375], Figures 27A, and 40.
Each of [0148]-[0150] describes a database containing information,
including package records. [0375], in a section entitled “1. Consumer
Tracking,” describes the ability of a consumer to track a return package once
it has been shipped. Figure 27a depicts a shipping label for a package for an
item to be returned (see [0071]). Figure 40 depicts an “exemplary Items
Ordered Screen” ([0085]). (See also [0375]: “FIG. 40 depicts an Items
Ordered Screen. By clicking on the Track your package link 405, the
Consumer can track the package associated with the described item.”)
We do not find in [0148]-[0150], [0375], Figures 27A, and 40, any
disclosure of “electronically storing package data, for the package, and
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including item data, for the items in the package, in a database, before
shipment occurs.” This disclosure describes a database with package
information and tracking return packages. But there is no disclosure of
storing item data for the items in the package before shipment occurs.
Accordingly, the Examiner has failed to establish a prima facie case of
obviousness. In light of this failure, the evidence of nonobviousness
submitted to overcome a prima facie case of obviousness (i.e., the
Declaration filed under 37 C.F.R. § 1.132 on Nov. 30, 2001) will not be
considered.

Claims 33, 34, and 36-51
We vacate the rejection of claims 33, 34, and 36-51 under § 103 as
being unpatentable over Williams and Le in light of the new ground of
rejection under § 112, second paragraph, entered in this decision below.
Given our finding below that the Specification does not describe the
corresponding structure for the functions recited in the means-plus-function
limitations of these claims so that the scope of the claims can be determined,
we are not in a position to further determine whether the cited prior art
discloses or would render obvious the claimed subject matter as whole. To
do so would require us to use speculative assumptions about what the claims
cover. Cf. In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (“As we have
previously indicated, our analysis of the claims leaves us in a quandary as to
what in fact is covered by them. We think the examiner and the board were
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wrong in relying on what at best are speculative assumptions as to the
meaning of the claims and basing a rejection under 35 U.S.C. § 103
thereon.”). See also Ex parte Catlin, (BPAI 2009) (precedential)
(http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073072.pdf ), p. 12.
Our decision to vacate this rejection as to claims 33, 34, and 36-51
should not be interpreted that we have taken any position as to the merits of
the rejection of these claims under § 103 as being unpatentable over
Williams and Le. See Steele, 305 F.2d at 863 (“Our decision is not to be
construed as meaning that we consider the claims on appeal to be patentable
as presently drawn. These claims should, it seems to us, be reviewed to
insure compliance with 35 U.S.C. § 112. See In re Citron, 251 F.2d 619, 45
C.C.P.A. 773.”).

NEW GROUND
Pursuant to 37 C.F.R. § 41.50(b) (2008), we enter a new ground of
rejection of claims 33, 34, and 36-51 under 35 U.S.C. § 112, second
paragraph as being indefinite.
We take claim 332, the sole independent claim, as representative of the
claims being rejected. It is reproduced below.
33. A computer-implemented system for
processing shipment and return of a package

2 Although we will focus on claim 33, we would raise the same question of
patentability for each of claims 34, 36, 38, 39, 41, 42, 44, 49, 50, and 51
because, like 33, these claims are also in means-plus-function format and
therefore the Specification must disclose sufficient structure corresponding
to the functions recited in the means-plus-function limitations of these
claims as well to avoid a finding of indefiniteness.
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containing items from a Sender to a Recipient, the
system comprising:
means for electronically storing package
data, for the package, and including item data, for
the items in the package, in a database, before
shipment occurs;
means for electronically retrieving shipment
tracking data, for tracking shipment of the package
from the Sender to the Recipient and return of one
or more items of the items of the package from the
Recipient to the Sender;
means for electronically adding the
shipment tracking data to the database;
means for electronically correlating the
package data in the database with the shipment
tracking data for the package;
means for electronically determining
whether the package requires customs clearance
and, if so, means for electronically generating the
appropriate customs documentation or data
transmission to a customs broker;
means for permitting an authorized user to
query the database for processing the shipment of
the package from the Sender to the Recipient and
the return from the Recipient to the Sender of the
one or more items of the items of the package; and
means for rendering data for display to the
authorized user, based on a query of the database
for shipping parameters of the package from the
Sender to the Recipient and return from the
Recipient to the Sender of the one or more items of
the items of the package.
Claim 33 is written in means-plus-function format. A claim limitation
that includes the term “means” is presumed to be intended to invoke means-
plus-function treatment, i.e., treatment under 35 U.S.C. § 112, 6th paragraph.
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Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999).
We do not have a situation here where (a) no function corresponding to the
means or (b) sufficient structure for performing the recited function is
recited in the “means” limitation of claim 21 to rebut the presumption that
the Appellant intended to invoke means-plus-function treatment. Cf., e.g.,
York Products, Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568,
1575-76 (Fed. Cir. 1996) and Cole v. Kimberly-Clark Corp., 102 F.3d 524,
531 (Fed. Cir. 1996). When the presumption has not been rebutted, 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).
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
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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.
Claim 33 recites multiple means-plus-function limitations. The
particular functions of the means-plus-function claim limitations recited in
claim 33 are
• “electronically storing package data, for the
package, and including item data, for the items in
the package, in a database, before shipment
occurs;”

• “electronically retrieving shipment tracking data,
for tracking shipment of the package from the
Sender to the Recipient and return of one or more
items of the items of the package from the
Recipient to the Sender;”

• “electronically adding the shipment tracking data
to the database;”

• “electronically correlating the package data in the
database with the shipment tracking data for the
package;”

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• “electronically determining whether the package
requires customs clearance and, if so, means for
electronically generating the appropriate customs
documentation or data transmission to a customs
broker;”

• “permitting an authorized user to query the
database for processing the shipment of the
package from the Sender to the Recipient and the
return from the Recipient to the Sender of the one
or more items of the items of the package;” and,

• “rendering data for display to the authorized user,
based on a query of the database for shipping
parameters of the package from the Sender to the
Recipient and return from the Recipient to the
Sender of the one or more items of the items of the
package.”
Further, given the computerized nature of these functions, one of
ordinary skill in the art would construe the claim means-plus-function
limitations as being computer-enabled means-plus-function limitations.
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 means-plus-function
limitations are computer-enabled means-plus-function limitations, this step
requires the Board to look to the Specification and identify the
corresponding algorithms for the recited functions listed above.
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 Game Tech., 184 F.3d
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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.
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.
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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 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 function in
the claims). See also Net MoneyIN, 545 F.3d at 1367 (“[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.”) The Federal Circuit has just recently
decided another case involving indefiniteness of a computer-enabled means-
plus-function limitation in a claim. See Blackboard, Inc. v. Desire2Learn
Inc., No. 2008-1368, slip op. at 21 (Fed. Cir. July 27, 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).
We have reviewed the record. We find that the Specification fails to
disclose algorithms corresponding to the functions recited in claim 33.
An algorithm may be expressed in a variety of ways in a Specification
to provide the necessary structure to comply with § 112, 6th paragraph. As
the court in Finisar (see supra) has stated: “This court permits a patentee to
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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.”
But we do not find any disclosure expressing algorithms
corresponding to the recited functions in claim 33.
The Appellant states that “[s]upport for the claimed features [of claim
33] can be found at least on e.g., Figure 6, paragraphs [0035], [0036], and
[0039]-[0043] of the specification.” App. Br. 3.3 We reproduce those
disclosures below.

3 This is the sum total of the discussion in the Briefs related to the support
the Specification gives for the subject matter claimed in claim 33. We do
not find this abbreviated discussion sufficient to explain the structure,
material, or acts described in the Specification corresponding “to each
claimed function” as required by 37 C.F.R. § 41.37(c)(1)(v) (2008).
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[0035] An apparatus for facilitating the
shipment of a package is illustrated in Figure 6.
The apparatus can be used to accomplish the
procedures described above. The apparatus
includes a processor 600 and a database 602
adapted in accordance with the preferred
embodiment for storing and processing shipper,
customs, and shipment data. As noted above, one
type of database that can be used is organized by
fields, records, and files, a field being a single
piece of information; a record being a complete set
of fields; and a file being a collection of records.
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The database 602 contains records 616, each of
which contains a number of fields, the fields
containing the package data.

[0036] A first communications link 604
connects the processor/database 602 with the
Sender's terminal 606, which is adapted for
selectively sending data to and receiving data from
the database 602. A second communications link
608 allows transfer of data between a shipper's
terminal 610 and the processor/database 602. A
third communications link 612 allows
communication between the processor/database
602 and a customs broker's terminal 614, the
customs broker being an entity that facilitates entry
of shipments into another country.

[0039] Thus, the above-described shipment
apparatus may be facilitated by use of the Internet.
In such an arrangement, the communications link
604, the communications link 608, and the
communications link 612 may all be accomplished
over the Internet. The processor 600 may be on an
Internet Web server.

[0040] The Sender's terminal 606 of the
preferred embodiment includes a computer, for
example, a personal computer, with access to the
Internet. The Sender's computer can request a
display of a Web page stored on the
processor/database 602 by issuing a URL request
through the communications link 604 to a
processor in a known manner. A URL consistent
with the present invention may be a simple URL of
the form:

:///

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A "protocol identifier" of "http" specifies the
conventional hyper-text transfer protocol. A URL
request for a secure Internet transaction typically
utilizes the secure protocol identifier "https,"
assuming that the browser and Web server control
application support and implement the secure
sockets layer. The "server path" is typically of the
form "prefix.domain," where the prefix is typically
"www" to designate a Web server and the
"domain" is the standard Internet sub-domain.top-
level-domain of the processor/database 602. The
optional "web page path" is provided specifically
to identify a particular hyper-text page maintained
on the processor/database 602. CGI scripts, Active
Server Pages, or other technologies can be used to
facilitate interactivity over the Internet.

[0041] The input device of the preferred
embodiment typically includes a keyboard, a
mouse, a bar code scanner, and a scale. However,
the input device can include any number or
combination of a keypad, keyboard, mouse, bar
code reader, text scanner, image scanner, scale, or
any other device for inputting data.

[0042] Similarly, the shipper's terminal 610
may comprise a computer similarly configured and
connected to the Internet for displaying and
inputting data through the second communications
link 608 to the processor/database 602. Likewise,
the customs broker's terminal 614 may also
comprise a computer similarly configured and
connected to the Internet for displaying and
inputting data through the third communications
link 612 to the processor/database 602.

[0043] In such an arrangement, the Internet
acts as the first, second, and third communications
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links 604, 608, and 612 between the
processor/database 602 and the Sender's terminal
606, between the processor/database 602 and the
shipper's terminal 610, and between the
processor/database 602 and the customs broker's
terminal 614.

These disclosures provide the elements of a general purpose computer
that form the system for implementing the invention. However, the
programming necessary for one of ordinary skill in the art to perform the
functions recited in claim 33 is not provided. A plain reading of these
disclosures by any person of skill in the art would reveal to such a person
nothing about the structure corresponding to the recited functions. Nothing
in these disclosures can be said to provide any insight into the structure, let
alone the algorithmic structure, that corresponds to the functions recited in
claim 33. Nothing in these disclosures provides one of ordinary skill in the
art with any understanding of the programming necessary for a general
purpose computer to implement the function recited in claim 33.
Accordingly, we find the Specification fails to disclose any algorithms
to adequately describe sufficient corresponding structure for performing the
functions recited in claim 33. Accordingly, we find that the Specification
does not describe the corresponding structure so that the scope of the claim
can be determined. For that reason, we further find claim 33, and claims 34
and 36-51 that depend on claim 33, in violation of 35 U.S.C. § 112, second
paragraph, as being indefinite.

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CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement; claims 1, 2, 4-11, 23-31, 33, 34, and 36-51 under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention; and claims 33, 34, and 36-51 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter because of a lack of utility.
We also conclude that the Appellant has shown that the Examiner
erred in rejecting claims 1, 2, 4-11, and 23-31 under 35 U.S.C. § 103(a) as
being unpatentable over Williams and Le.
We enter a new ground of rejection of claims 33, 34, and 36-51 under
35 U.S.C. § 112, second paragraph, and therefore, under the Steele doctrine,
vacate the rejection of claims 33, 34, and 36-51 under 35 U.S.C. § 103(a) as
being unpatentable over Williams and Le.

DECISION
The decision of the Examiner to reject claims 1, 2, 4-11, 23-31, 33,
34, and 36-51 is reversed.
This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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.”
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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)

hh
ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064