Arguments guaranteed to lose: "non-analogous art" in context of anticipation

If you're addressing an anticipation rejection, there is absolutely no point in arguing that the reference isn't analogous art. Case law clearly says that "non-analogous art" is a legally irrelevant doctrine for an anticipation rejection. (See In re Schreiber, 148 F.3d 1478, 1478 (Fed. Circ. 1997)).

I've seen a number of cases where the Applicant really did make a non-analogous argument for anticipation, and where the Board pointed out the error. Not much to say about those cases. Perhaps the Applicant just didn't understand the law.

But in other cases, it looks like the Applicant's real point is that the terms used in the reference just don't mean the same thing as in the claims. For example, in Ex parte Zilavy, the reference taught an interrupt controller and the claims referred to a controller for a particular type of interrupt, a "system control interrupt." The Applicant argued that a generic interrupt described in the reference was different from the claimed "system control interrupt." However, in making the argument, the Applicant said the reference was "non-analogous". The Board correctly pointed out that whether or not a reference is "non-analogous" is irrelevant to anticipation: the only question is whether the claimed structure/function is taught.

In still other cases, it looks like the Applicant's real point is that the Examiner has ignored some limitations as "intended use," and that the reference doesn't teach those limitations. For example, in Ex parte Schryver, the appealed claim contained a number of structural limitations and was "operable for mixing two or more fluids." The Applicant made an argument along the lines of "clearly, the reference doesn't have the limitations at issue, because it's for a completely different use." While this underlying argument may be appropriate, couching it in terms of "non-analogous art" isn't helpful.

It's hard to tell from the decisions whether this inappropriate line of argument damaged the Applicant in any way. Ideally, the Board would simply ignore the "non-analogous" sentence in the argument, while still paying attention to the underlying basis of the argument (e.g., Zilavy's argument that a generic interrupt is not the same as the claimed interrupt). But what if the Board didn't ... what if they got to "non-analogous art" and skipped to the next argument? Why take that chance?

I see no upside to using the phrase "non-analogous art" when arguing anticipation, and plenty of downside. You should delete "non-analogous art" from your anticipation toolbox.

By the way, "teaching away" is another argument guaranteed to lose in the context of anticipation. See my earlier post here on this topic.)

"When" means "during" rather than "in response to" (Ex parte Karaoguz)

Ex parte Karaoguz
(Appeal 2009-001433; Serial No. 11/093,369; Tech. Center 2600)
Decided: September 21, 2009

The claim limitation at issue was:

a gateway ... capable of transmitting at least a portion of the collected information to a first one of the plurality of access devices, when the first one of the plurality of access devices is detected to be communicatively coupled to the gateway;

The Board made it clear that in this claim, "when" does not mean "in response to":

It appears that the Examiner has interpreted claim 1 to require that in response to the access device being communicatively coupled to the gateway, the gateway transmits a portion of the information to the device. We do not find that the claim is so limited.

Although the Board did not state this, it seems clear that they interpreted "when" as "while":  gateway transmits while the device is detected as communicatively coupled. Here's what the Board said:

Rather, the claim merely requires that when a device is communicatively coupled to the gateway the gateway transmits a portion of the information. It appears to us that Choi does teach this feature. Choi teaches that the gateway provides a web page, which provides information to a user, and that page may be accessed by devices in the home or remote to the home. Fact 6. Thus, with Choi’s system, if a device that can access the web-page is turned on, within the range of the gateway, and requests the web page, it will receive a portion of the collected information. (i.e. the gateway will transmit a portion of the collected information to the device). Fact 6.

Here's how I interpret the Board's explanation. Turn the device on within range of the gateway. After power up, the device requests a web page. The gateway transmits the web page. That means the gateway transmits the web page during the time ("when") the device is communicatively coupled, as claimed.

This decision shows that "when" was not a good choice of words to claim a condition. In two previous posts have discussed the phrase "in response to". My most recent post in this subject highlights a case (Ex parte Jerding) in which the Board interpreted "in response to X, Y" as defining an action Y that is conditional on X. An earlier post highlights another case (Ex parte Golivinsky) which reached a different result: the Board interpreted "in response to X, Y" as meaning the claimed action Y followed X.

A mobile phone is a PDA is a calculator (Ex parte Joachim)

Can you say that a phone that contains a calculator function *is* a calculator? Ex parte Joachim seems to say that, which brings up a whole host of issues in my mind.


Ex parte Joachim
(Appeal 2008-004979; Serial No. 10/412,810; Tech. Center 2100)
Decided: December 10, 2009

This application is about calculators. Here's one of the calculator embodiments:

Here's one of the claims on appeal:

11. A calculator which comprises:
a housing comprising a base and a carabiner clip assembly unitary with the base;
the base having an exterior surface;
a keypad data input component on a portion of the exterior surface of the base capable of inputting numeric data and numeric calculation function commands into a microprocessor; and
a data display on a portion of the exterior surface of the base for displaying data from said microprocessor.

The Examiner's anticipatory reference wasn't an actual calculator. Instead, it described various electronic devices, such as mobile phones, PDAs, and portable computers. The Examiner asserted two reasons for reading these devices as "calculators."

One, "[t]he definition of computer is to perform calculations and the definition of a computer is any device capable of processing information to produce a desired result". [My two cents: That's not the broadest reasonable interpretation in view of the specification — it's a ridiculous interpretation.]

Two, the reference taught that the mobile phone may also "function as a personal digital assistance or similar computing device". Therefore, the Examiner reasoned: the mobile phone is a "computing device capable of complex calculations"; a calculator is a subset of a computer; and the mobile phone is a calculator.

The Board summarily agreed with the Examiner's reasoning and conclusion. I don't disagree strongly with the result, but something about the reasoning bothers me.

For one thing, it's not clear what the Examiner was doing with the PDA. The premises "mobile phone is a computer" and "calculator is a subset of a computer" do not lead to the conclusion "mobile phone is a calculator".

If the Examiner was trying to say that the mobile phone includes a calculator function ... well, then, show that. Make a §103 rejection, using the anticipatory reference (which presumably taught the housing and carabiner) together with a secondary reference that showed a phone with a calculator function.

Note that my improved rejection still relies on "a phone that contains a calculator function *is* a calculator." I'm not sure I agree. [Anyone else want to comment?]

This application was assigned to Tech. Center 2100. I deal almost exclusively with those Art Units, where practitioners and Examiners are used to everything being described in functional terms: a calculator is something that calculates. I wonder if this kind of mindset affected both the Examiner and the Board.

Would this sort of rejection be found in a mechanical art unit? I see this treatment of claim language and references as a stark contrast to the Ex parte Jenkins fishing equipment case which I recently posted about (here). In Jenkins, the Board bent over backwards to read the claim term "storage space" in the context of fishing equipment and the result was that the storage space was interpreted to be bigger than a rivet. Yet in Joachim the Board did nothing to interpret "calculator" in the context of the application, which was all about a calculator, not a computer – as those terms are ordinarily interpreted.

Board says don't lose sight of the forest for the trees

The decision Ex parte Gaertner includes an interesting comment from the BPAI:

The lengthy positions of Appellants and the Examiner in the Brief, Answer, and Reply Brief fail to focus upon the issues before us in this appeal and merely present arguments about arguments, essentially losing sight of the forest for the trees.

The Board went on to state what it considered to be the real issue in the case, and then made Findings of Fact about what the reference did and did not teach. (For what it's worth, the rejection of the independent claims was reversed.)

Okay, I wouldn't want my brief to be characterized as "losing sight of the forest for the trees." But I can certainly understand how it happens. As an Applicant, I feel virtually compelled to address every point made by the Examiner, in every response. And since the Examiner never explicitly concedes a point, or withdraws an argument, I sometimes also repeat what I said before — just to cover all my bases. By the time I get to appeal, the Brief could easily devolve into "arguments about arguments".

In cases involving protracted prosecution, an arguments section that clearly spells out and summarizes the main point(s) of disagreement can help to "keep the forest in sight." In fact, I see value in doing this summary-of-main-points in a normal response, not just in an appeal. After all, I want the Examiner to understand my arguments so that I can avoid going to the Board.

Reference may be material if even not prior art

Takeaway: A reminder from a district court: even when the filing date of a reference is after the effective filing date of the application being prosecuted, that reference may nonetheless be material and thus implicated in the Rule 56 duty of disclosure.

This issue came up in Leviton Mfg Co., Inc. v. Shangai Mehaio Elec., 613 F.Supp.2d 670 (D. Md. 2009), a typical patent infringement suit with an inequitable conduct counterclaim. The trial judge did find inequitable conduct, and given the judge's findings of fact, I'm not surprised. The prosecuting attorney failed to disclose another patent application  — one with different inventors yet nearly identical claims. The trial court found that such a scenario raised questions about (1) the inventorship of the '766 patent; (2) whether the specification of the '766 patent supported its claims; and (3) the possibility of double patenting.

All this sounds like sketchy behavior which might indeed merit a charge of inequitable conduct. But more important was the point made by the court when the patentee tried to argue that the other application wasn't material because it wasn't prior art. The court in Leviton pointed out that Federal Circuit case law makes it clear that information may be material under Rule 56 even when it's not prior art, because a prior art rejection isn't the only relevant issue during prosecution. Other issues such as inventorship, double patenting, and enablement must be considered when determining whether or not a particular piece of information triggers the Rule 56 duty of disclosure. 

What if the bad Leviton facts (same claims, different inventors) weren't present? What if the only question on duty to disclose was "could the reference be used as prior art?" A simple analysis might be: "Since the effective filing date of my app predates the effective filing date of the reference, the reference is not prior art, so no need to disclose."

The Leviton court seemed to suggest that this is the wrong analysis. The court noted that the MPEP directs the Examiner to look at the actual filing date of an application-in-prosecution, not its effective filing date:

Plainly, the Germain application is material even though it was filed subsequent to the effective filing date of the '766 Patent. Patent examiners are required to "search all applications based on the actual U.S. filing date of the application rather than on the filing date of any parent U.S. application for which benefit is claimed. Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application but before the actual filing date of the application being examined." Manual of Patent Examination Procedure § 707.05, Examiner Note (emphasis added). The '766 application's effective filing date is August 20, 1999 because it claims priority to its parent application's filing date. The '766 application was actually filed on April 19, 2004, after the Germain application was filed. The Germain application was material prior art because its effective filing date is after the filing date of the '766's parent application but before the '766's actual filing date.
(Leviton, 613 F.Supp.2d 670, 682, emphasis in original.)

I didn't find any other inequitable conduct cases in which the court suggested that the actual filing date of the application-in-prosecution should be used to make the is-prior-art determination. Even so, it may be worth considering this next time you're looking at filing an IDS.

Ex parte Tanaka (precedential): reissue not available to add narrower claims when issued claims remain in the application

In the precedential opinion Ex parte Tanaka (decided Dec. 9, 2009), the BPAI ruled on an issue of first impression: "whether the presentation of a narrower claim in a reissue application that still contains all of the original patent claims is an error correctible by reissue." No facts were at issue in this case, only the meaning of the reissue statute.

The Board reviewed fifty years of case law, distinguishing the closest Federal Circuit case (Hewlett Packard Co. v. Bausch and Lomb) and several cases from the Federal Circuit's predecessor (the CCPA). The Board then concluded that reissue is not available to add narrower claims when issued claims remain in the application:

The Appellant attempts to have it both ways, by seeking to add narrower claims to the original patent without complying with the requirements of 35 U.S.C. § 251 and 37 C.F.R. § 1.175(a)(1), to be wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent. Section 251, however, requires that for the Director to reissue a patent, the patent must be deemed to be wholly or partly inoperative or invalid. The reissue statute may be remedial in nature, Altenpohl, 500 F.2d at 1156, but it is not as broad in its plain wording as to allow a patentee to simply re-prosecute an otherwise operative and valid patent.
(Decision, p. 20.)

Enough said.

All Things Pros now covers District Court decisions

In the few months that I've been writing this blog, I've stuck to covering BPAI decisions, with the very occasional discussion of a Federal Circuit appeal of a BPAI decision.

I've decided to also consider district court decisions as possible blog topics. After all, I spend a lot of time thinking about infringement issues as I prosecute, yet the BPAI doesn't handle infringement. I also (unfortunately) think from time to time about inequitable conduct, since any patent that is litigated is likely to involve an inequitable conduct counterclaim. For these reasons, I'll now be covering district court patent cases from time to time.

You might ask why district court decisions rather than Federal Circuit. Two reasons. One, there's lots of coverage out there already on Federal Circuit decisions. Two, there are lots of issues that come up at the district court but are not appealed. So the number of interesting issues is simply larger at the district court level.

"Responsive to" means action must result from preceding event (Ex parte Jerding)

Ex parte Jerding
(Appeal 2009-001407; Appl. No. 09/590,488; Tech. Center 2400)
Decided: December 22, 2009

No need to get into details of the technology, or even of the claims. This case was all about the meaning of "responsive to."

The Applicant argued:

[A] step 'responsive to' another must not only occur later in time, but must also be performed as a direct or indirect result of the first step being performed.

The Examiner took a much broader reading:

Specifically, the Examiner states that "responsive to" is being interpreted "merely as an ordered operation of process steps wherein certain steps are performed indirectly following or in return to the condition having occurred" (Ans. 13). The Examiner further clarifies his position: the open ended nature of the claims does not require that the "determining" step be performed immediately after rebooting (Ans. 15).

The Board referred to a dictionary definition of "response," then explicitly construed the phrase at issue:

Based upon this definition, we are persuaded by Appellants' arguments. The broadest reasonable interpretation of the claim term "responsive to" requires that a step or action necessarily result from a preceding action or event. Contrary to the Examiner's position, it is not sufficient that an act merely follow or occur subsequent to another action or event.
(Decision, p. 7.)

Once this phrase was interpreted, the result clearly followed:

The Examiner bases the rejection of claim 74 solely on the broader, alternative interpretation of "responsive to," and does not allege that the cited prior art would render claim 74 obvious under the narrower interpretation that we adopt today (see Ans. 3-21). For the foregoing reasons, then, Appellants have persuaded us of error in the Examiner's obviousness rejection of independent claim 74.
(Decision, p. 8.)

I think this case is a slam dunk, because this is the reasonable interpretation of "responsive to." And I'm certainly glad to see the Board take this position. However, it appears to be in direct conflict with an earlier decision, Ex parte Golovinsky, in which the Board explicitly construed "'in response to' as meaning "after' or 'following'." (I discussed Ex parte Golovinsky here.) Note that Ex parte Golovinsky is in the same technology center as Ex parte Jerding! I'd prefer a little more consistency from the BPAI.

Case law you can use: Examiner cannot use same structure to disclose separate claimed elements

Takeaway: The BPAI has interpreted Federal Circuit case law to say it's improper for the Examiner to rely on the same structure as disclosing two separate claimed elements. In several anticipation rejections where this issue arose, the Board used the following cites:

Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not meet claim element requiring at least two conveyors).
In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means).

Caveat: Note that the Board has limited its application of this doctrine to anticipation rejections. Although the Board didn't say one way or the other, I'm not sure that this doctrine applies to obviousness. Standard obviousness analysis would seem to support a prima facie §103 single reference rejection, where the reference showed a single element, with the proposed modification being "it would be obvious to replace the single element performing two different functions with two different elements". Then the Applicant is free to argue why it wouldn't be obvious to do that.

Here are some BPAI decisions where the Board has applied the doctrine from In re Robertson and Lantech to anticipation rejections.  

Ex parte Weideman: The claims were directed to a vehicle seat. The Board agreed that the reference disclosed the claimed seat back and seat bottom, but found the Examiner's rejection was "flawed."

The Examiner finds that the horizontally extending portions of frame members 3, 4, also identified more specifically by reference numeral 7, not only constitute part of the seat bottom, but also constitute the structure in Lohr that reads on the claimed “center support extending forwardly from [the] central pillar”. Consistent with the principle that all limitations in a claim must be considered to be meaningful, it is improper to rely on the same structure in the Lohr reference as being responsive to two different elements (seat bottom and center support) in claim 1.
(Weideman, internal citations omitted.)

Ex parte Koutsky: The claims were directed to a vehicle seat suspension apparatus. The Board agreed that the flange and rollers in the reference correspond to the claimed "means for allowing reciprocating movement," but found the Examiner's reading of the reference with respect to other claimed elements was in error:

However, the Examiner uses the same [flange] 56 and guide rail 34 as the elongated guide and guide engaging member. Thus, the Examiner has used the same element or structure in the Koutsky reference to satisfy two different limitations from the claimed subject matter. However, when a claim requires two separate elements using one element construed as performing two separate functions will not suffice to meet the terms of the claim. Accordingly, it is our finding that Koutsky does not anticipate the claimed subject matter on appeal.
(Koutsky, internal citations omitted.)

Ex parte Konstant: The claims were directed to a storage rack, which included a horizontal deck beam interconnected between two columns. The beam included an upper flange supporting a locking cross bar, and an outer face in which an aperture was located. The Examiner applied this reference:

The Examiner found the reference's support surface (18) satisfied the "upper flange" (with locking cross bar 30), and that the same support surface 18 satisfied the claimed outer face containing an aperture (20). The Board reversed the rejection:

The Examiner erroneously read both the upper flange/upper support width and the outer face on the same structure in Mulholland. Consistent with the principle that all limitations in a claim must be considered to be meaningful, it is improper to rely on the same structure in the Mulholland reference as being responsive to two different elements (the upper flange/upper support width and the outer face) in claims 1, 10, and 18.
(Konstant, internal citations omitted.)

Note that these are all mechanical cases, by which I mean there was a lot of structure in the claims. I don't know whether this reasoning can be adapted to cover functional claims. That is, if the Examiner uses a single box in a block diagram for teaching the claimed elements "network traffic monitor" and "policy mechanism for applying a policy to the network traffic," I'm not sure arguing "improper to rely on the same structure in the reference as teaching two different elements" will work — a box in a block diagram of a computer system may not be "structure" in the same way that a flange and a roller are "structure."

Case law you can use

One of the benefits of reading BPAI decisions is that occasionally I see the Board citing specific case law supporting an argument that makes sense to me, but which I can't find addressed in the MPEP. For example, I cite In re Arkley for the proposition "the Examiner can't pick and choose from unrelated embodiments in an anticipation rejection." I couldn't find anything in the MPEP about this, but when I saw the Board refer to it in a decision, I started using this argument and citing the case. (See my discussion of In re Arkely here.)

Now that I'm reading lots of BPAI decisions, I'm making a concerted effort to capture these great case law quotes. And when I find a good one, I'll be posting about it as "Case law you can use."

The first "Case law you can use" post will be later this week, and I'll be adding this as a tag to enable readers to quickly find these posts.

BPAI remands without deciding prior art rejections

From what I've seen, it's quite common for the BPAI to issue a new rejection under § 101. Not too surprising, since many claims now on appeal are obviously vulnerable under Bilski. But I just read a BPAI decision from a couple of weeks ago (Ex parte Lancefield) where the Board raised a § 101 rejection without deciding on the prior art rejections. Technically, they "vacated" the outstanding rejections and remanded back to the Examiner with both the old and the new rejections.

Apparently the BPAI is taking a cue from the Federal Circuit in In re Comiskey, which also refused to reach the prior art grounds of rejection "because we conclude that many of the claims are 'barred at the threshold by § 101'."

I'm really hoping this isn't the start of a trend. The main reason I appeal is to get someone from outside the Examiner corp to decide on the prior art rejection, and vacate-plus-remand puts yet another roadblock in front of me. The thought of having to spend another 12+ months in the cycle of Office Action, Brief, Answer, Reply, wait-for-BPAI decision is infuriating.

Now, perhaps there really *is* no point in deciding on the prior art grounds if the claim has fatal problems under § 101. I'm not sure the vacated Ex parte Lancefield case is fixable by a minor amendment. Here's the only independent claim in the case:

1. A computer system implementing an object oriented data processing schema configured to store objects and to store definitions of relations between the objects, the system being configured so as to support definitions of relationships of two types, the two types including:
a first type of relationship whereby one object in a hierarchy related to another object by a relationship of the first type is deemed to belong to a set defined by the other object; and
a second type of relationship distinct from the first type of relationship and whereby a child object related to a parent object by a relationship of the second type is deemed to inherit characteristics of the parent object and, to an extent specified in the relationship of the second type, a proportion of a characteristic of a further object related to the said parent object by a relationship of the first type:
whereby the system uses the schema to process the objects in accordance with the defined relationships.

As long as the BPAI limits its vacating to these types of claims, I won't be too upset.

New blog: Florida Patent Lawyer

I find most of BPAI decisions that I blog about through various random methods. But in the case of Ex parte Denison, credit goes to the Florida Patent Lawyer blog -- he discussed the Denison decision here.

I've added this newcomer blog to my blog reader. Not only does it discusses patent prosecution topics (rare), Florida Patent Lawyer covers a nice mix of other topics too, including TTAB decisions and ITC decisions. In short, stuff that you won't find on every other patent blog.

Examiner cannot rely on arbitrary delineation of structure (Ex parte Denison)

Takeaway: The Examiner isn't allowed to just pick random pieces of a drawing and read it on parts of your claim. The Board put it like this: "[T]hat “structure” identified by the Examiner results only from an arbitrary delineation of Berry’s structure, made in order to meet the claim limitations. "

Ex parte Denison
(Appeal 2009-004110; Appl. No. 10/158,362; Tech. Center 3700)
Decided: January 19, 2010

This application is about a medical device: a stent to hold open a blood vessel. As claimed, the stent includes cylindrical elements with a specific shape. Here's a 3D view of the stent reference used by the Examiner, to give you some perspective.

One of the claim elements at issue was: "each cylindrical element has a plurality of alternating valley portions and peak portions, the valley portions including alternating double-curved portions and Y-shaped portions..." The Examiner used overlapping portions of the reference stent to read first on the double-curved and then on the Y.

The claims require "double-curved portions" and "Y-shaped portions", but the claims are silent as to whether or not the two portions partially overlap in a sense (in other words, whether part of the double-curved portion forms part of a Y-shaped portion).

You can see this overlap here, where the claimed "double curve" looks like the letter "W".

The Applicant argued that the Examiner's interpretation is unreasonable because it "requires the viewer to first visualize one shape and then completely disregard portions of that shape in order to visualize a second, distinctive shape.” The Applicant contended that the claims instead require “[c]omplete and distinct structural shapes depicting both the double-curved shape and Y-shape.”

The Board found that a POSITA wouldn't recognize the portions, as claimed, in the reference:

However, that “structure” identified by the Examiner results only from an arbitrary delineation of Berry’s structure, made in order to meet the claim limitations. Even giving the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood the claim terms requiring “double-curved portions” and “Y-shaped portions” to include the arbitrary portions of Berry defined only by the Examiner.
(Decision, p. 5.)

Seems like "arbitrary delineation of structure" is a great argument to use in mechanical applications. But in the art units I deal with, almost everything is described in functional, rather than structural terms. So I don't know how useful this argument will be for such cases.

Related Posts: Here are two other posts on arbitrary structure:

• Examiner can't use arbitrary structures to interpret a reference and  
• Arbitrarily claimed structures are vulnerable to Examiner's arbitrary interpretation of reference

Claim indefinite for variables with no meaning attached (Ex parte Nishioka)

Ex parte Nishioka
(Appeal 2009-001507; Appl. No. 10/046,224; Tech. Center 2400)
Decided January 12, 2010

This patent application is related to encryption, so I would expect math to be involved. But look at the claim — it appears to me to be nothing but math: 

I'm not afraid of math, but this is too much for me to think about (at least in my free time). So I'm not going to discuss the substance of these claims. But I thought the indefiniteness rejection might be a good lesson for those who deal with math-intensive applications from time to time.

The Examiner viewed the claims as a laundry list of elements, with no relationship. Worse, the elements themselves were "undefined."

[The independent claims] recite the limitations "a key generation step of generating a secret-key" and "a public-key" with a list of undefined elements in between without a relation of how are they being used to generate a key or how are they obtained/selected. The relationship between the elements listed and how they are used to produce a key is not clear. Examiner contrasts the language found in the instant application with the language found in the prior art's claims, where the variables are clearly defined. A clear definition of the variables would overcome this 112 rejection.
(Examiner's Answer, p. 25.)

In response, the Applicant simply asserted that the elements in the claim are well known to one of ordinary skill in the art, then "invite[d] the Board to provide a statement of how to overcome this rejection."

The Board affirmed the indefiniteness rejection, noting that variables are not definite unless they have meaning:

This is an art of very high complexity (FF #3), and the practitioner in such an art is assumed to have advanced math skills. But the attachment of meaning to the variables expressed in the equations of the claims, either through definitions in the specification or in the claims themselves, adds necessary clarity to the claims to be able to properly appreciate the metes and bounds of the protected invention. Appellants have not done this. The Examiner’s contrast of the instant claims to those in the prior art was insightful.
(Decision, p. 9.)

Although the Board didn't come right out and say it, I'd say the reference to the claims in the prior art was a strong hint to the Applicant as to the type of claims that would comply with §112 ¶2nd. I've reproduced the claims from the prior art reference below.

You can see that while variables are used, so are descriptions of the variables. Also, even mathematical functions are described in words (i.e., product of first base-group-number raised to the power of a first monotone function of said first exponent-number).

I think the lesson here is that when dealing with math-intensive subject matter, you should think carefully about simply pasting equations into the claims.

PTO memo on acceptable computer-readable medium claims

A new memo on acceptable language in computer-readable medium claims is available on the PTO website at  http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf

The memo, signed by Director Kappos himself, is "an effort to assist the patent community in overcoming a rejection or a potential rejection under §101." The memo suggests amending the claims to state that the computer-readable medium is “non-transitory.” The PTO is taking the position that such an amendment is not new matter even if the word "non-transitory" is not in the spec — as long as the spec did describe the medium as *something* other than a signal.

It doesn't appear to me that this memo has yet been officially published to the outside world. Although it's on the PTO website, it's not on the page with all the other examination guidelines (here).

I suspect this is an internal memo that has been leaked, and that the memo will be made official in the near future. I found out about the memo from the IP Spotlight blog.