Wednesday, August 26, 2009

Method claim indefinite for passive claiming (Ex parte Brune)

Ex parte Brune 
Decided August 7, 2009
(Appeal 2009-004646, Appl. No. 10/399,272, Tech. Center 2100)

In Ex parte Brune, the Board of Patent Appeals and Interferences found a method claim indefinite under §112 ¶2, finding that "we are unable to discern the steps of claim 1." The Board called attention to several "wherein" clauses, such as "where a device can be selected using a control device" and "wherein the user interface of a first device is displayed."  The Board noted that a method claim should have "clauses that are designated by a present participle," citing to Credle v. Bond (Fed. Cir. 1994) for this grammar lesson. (Decision, p. 8.)

I think the Board could have explained the situation better.

I would have used the terms active and passive rather than "present participle." Thus, I would have characterized the problem as: the body of the claim included "wherein" clauses using passive verbs ("is displayed") rather than active verbs ("displaying").

Also, the claim had no active verbs at all. Would just one have saved the claim from indefiniteness? I say that because a strict approach to claim drafting would find the scope of such a claim quite clear: it's limited to this single positively recited step, and the remainder of the phrases are not given any patentable weight precisely because they're not positively recited. [See MPEP 2111.04 for a surprising statement about the patentable weight of "wherein" clauses. ]

Personally, I dislike claims with lots of wherein clauses. I try to confine my use of wherein clauses to a very specific situation: narrowing a generic noun to a more specific noun "wherein the LAN is Ethernet." Not because I've seen this type of rejection before, but because I agree with the basic philosophy of this decision: claim scope is more definite when you positively recite elements.

I haven't done any analysis on indefiniteness rejections, but I have read a dozens of BPAI decisions this year, and this is the first rejection I've seen of this kind. This case is one of only two appeal decisions on the BPAI website that cite to Credle v. Bond. [Note that the Board could have made similar decisions without citing to that same precedent.]