Ex parte Rodriguez (precedential): 112 is the new 101

Ex parte Rodriguez (precedential)
Decided October 1, 2009
(Appeal 2008-000693, Appl. No. 10/132,492, Tech. Center 2100)

This case involved four different sets of claims: apparatus claims; means-plus-function claims; method claims; and computer-readable medium claims. The technology related to verification of hardware components, using software running on a computer.

All claims were rejected by the Examiner under §102(b). Without reaching the merits of the Examiner's rejection, the Board entered new grounds of rejection for each of the claim sets:

• means-plus-function claims: rejected under §112 Second, following the rationale set out in Aristocrat v. Inter. Game Tech.
• apparatus claims: found to be means-plus-function claims and also rejected under §112 Second, following Aristocrat.
• apparatus claims: alternatively, if not considered to be means-plus-function, rejected under §112 First, enablement.
• method claims and computer-readable medium claims: rejected under §112 First, enablement.

A rejection under §101 was (inexplicably) missing.

If the Patent Office issues guidelines based on this decision, I predict Ex parte Rodriguez will have a big impact on practitioners that prosecute "software" applications. Method claims have already hit a roadblock with 101/Bilski, but Bilski itself doesn't suggest its application to other claim types. This decision, on the other hand, applies to method claims – possibly even those that pass the Bilski test – and most of the other claim types that are used cover software implementations. The only claim type that isn't directly implicated by this decision appears to be a processor-plus-memory claim.

Although the four new rejections were each slightly different, all are based on the same underlying facts: the claims contained very little structure and instead relied almost completely on functional language; and the specification contained very little detail about how to implement the functions. Therefore, the patent applications that will be most affected by Ex parte Rodriguez are ones that fit this fact pattern.

In this post, I'll discuss how those facts played out in Ex parte Rodriguez in the rejections of the means-plus-function and apparatus claims. In a future post, I'll discuss the rejection of the method and computer-readable-medium claims.

Means-plus-function claims: The specification stated that the various claimed functions could be implemented by a "conventional general purpose digital computer," and also said "appropriate software coding can readily be prepared by skilled software programing." However, the Board found that no specific description of how to generate a system configuration file was provided.

Whenever a general purpose computer is disclosed as the means for implementing a function, an algorithm to implement that function must also be disclosed. This rule – essentially saying that an algorithm serves as the "structure" – was recently set out by the Federal Circuit in Aristocrat, although Aristocrat followed precedent set way back in 1999 by WMS Gaming. Because the spec disclosed no such algorithm, the Board found the means-plus-function claims to be indefinite.

Apparatus claims treated as means-plus-function: An example limitation in the independent apparatus claim is: "a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system." Even though the magic word "means" was not present, this limitation (as well as each of the others) was still subject to §112 ¶6 because the Board found no evidence that the terms in question (e.g. "system configuration generator") connoted structure. Having determined that the apparatus claims were really means-plus-function in disguise, the Board then repeated the Aristocrat analysis set out above to find the claims indefinite.

Apparatus claims treated as NON-means-plus-function: If the apparatus claims did not fall under §112 ¶6, the Board found that these claims were invalid for lack of enablement "because the claim elements are purely functional (i.e., there is no particular structure to support the function being performed)." (Decision, p. 28.) To hold otherwise would allow the claim to "encompass any and all structures for achieving that result, including those which were not what the applicant had invented." (Decision, p. 30.) "Congress permitted [through §112 ¶ 6] the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof." (Decision, pp. 30-31, quoting Greenberg v. Ethicon, Fed. Cir. 1996.)

The Board found that the "system builder" limitation covered any and all structures that performed the recited function. Since "any and all structures" included ones not described in the specification, the Board then entered an enablement rejection for the apparatus claims.

Method and computer-readable-medium claims: I'll discuss these in a future post.