Ex parte White
Appeal 2009-004737, Appl. No. 10/124,239, Tech. Center 2600
Decided November 18, 2009
The claim at issue was:
1. A system for associating distinctive rings with one or more callers, said system comprising:
a. a subscriber interface server storing, for each subscriber, information identifying one or more callers and pre-set ringer types associated with each of said callers, wherein said ringer types are pre-set via a menu-based interface available via said subscriber interface server; and
b. a telephony system communicating with said subscriber interface server and associating incoming callers with any pre-set ringer type and rendering any of said pre-set ringer type to said subscriber.
The dissent relied on several dictionary definitions of "system." Using one definition (“an assemblage or combination of things or parts forming a complex or unitary whole"), the term meant "apparatus." But using two other definitions, the term meant "method": "coordinated body of methods or a scheme or plan of procedure; . . . a system of government;” and “any formulated, regular, or special method or plan of procedure: a system of marking, numbering, or measuring; a winning system at bridge.”
The dissent noted that typically the meaning of "system" in the preamble is clear from the body of the claim. But the dissent found that in this claim, the limitations in the body could be interpreted as either devices or method steps:
For example, the claim limitations “a subscriber interface server storing [information]”; and “a class 5 switch working in conjunction with said subscriber interface server identifying an incoming call . . . , identifying a pre-set ringer type,” and “rendering said identified pre-set ringer type . . . .” can be reasonably interpreted in two alternative manners. On the one hand, the limitations can be interpreted as reciting two devices (a server and a switch) as well as processes for making, and the intended uses for, these devices. Alternatively though, the claim limitations can be reasonably interpreted as reciting a series of method steps (storing information, identifying a pre-set ringer type, and rendering said identified pre-set ringer type), with the method claim being further limited to particular devices (server and switch) that perform the recited method steps.
Citing Ex parte Lyell, 17 USPQ2d 1548, 1550 (BPAI 1990), the dissent said this choice between device-with-intended-use vs. method-performed-by-particular-device was important because it affected the determination of infringement.
For example, if claim 1 is interpreted as being directed to an apparatus, a given subscriber interface server in combination with a given class 5 switch could potentially infringe claim 1 even if the information identifying pre-set ringer types is pre-set within the server by some process other than “via a menu-based communication session between a subscriber’s telecommunication equipment and said subscriber interface server.” But, if claim 1 is alternatively interpreted as being directed to a method, the process by which ringer type information is pre-set in a given server would have bearing on whether claim 1 is infringed.The dissent concluded by finding that the claim was indefinite under IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
My two cents: I get the dissent's point about indefiniteness – but I think interpreting the word "system" as "method" to reach that conclusion is really strained. I think the dissent should have relied only on Ex parte Lyell and IPXL Holdings to make the point.
I was disappointed to see the dissent characterize the functional limitations (e.g., "identifying an incoming call") as intended use. I haven't noticed this happening much at the Board, though I fight this battle with Examiners sometimes.
The dissent also characterized these functional limitation as "processes for making" the claimed devices. That seems weird to me – I've just never thought of my functional limitations to an apparatus as "making" the apparatus. This way of thinking about functional limitations was also expressed in Amazon, where the court talked about infringement occurring "when one creates a system that allows the user [to perform claimed actions]."