Details:
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]."
There are a lot of applicants of mine who better hope that "system" can be interpreted as "method" because they used the term to mean that. Although, I'd be totally with you if you said that "system" should not be interpreted that way in patent law. We have specialized terminology for methods, processes, etc.
ReplyDeleteI think in this particular claim though it's pretty hard to say that it is a method since the first thing that the claimed invention comprises is: a subscriber interface server, which, if I had to guess, is a structure. Methods do not comprise structures.
However, this is sloppy drafting.
"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. "
Um nope, doesn't work like that bub.
"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)."
As much as I love to see the board using the rejection that I pioneered and broadcast on PO so long ago, they need to learn when it is proper to use and when it is not proper to use. In this case it was inappropriate to use it.
I do agree with him that the difference is important, but in this case the claim is clearly not a method.
However, after having read the claim all the way through again, I can see the issue the dissent is having with the claim. The issue is that the language which you'd like to regard as "functional" isn't really presented in functional format. It is presented in method step format. There is a difference. The function of something is something that it can do, not that it necessarily is doing right NOW, at the moment as it were. Likewise, functional limitations define what the object CAN DO as opposed to what it IS DOING, just as intended use language defines what the object is INTENDED TO DO, though not necessarily what it is doing at the moment or what it CAN DO.
Here, the dissent mistakenly refers to the method steps as intended uses. He is mistaken. They are not merely intended uses in this claim. They are in fact specified method steps that MUST be occuring at the very moment. The difference is that an intended use limitation could instead not be happening at the very moment, but could be "intended" to happen at some later moment.
All that said, it does appear that this claim is mixing claim types inappropriately under 112 ala IPXL Holdings. The dissent just didn't put it's case down properly. Had he done so he might have convinced his fellows.
ReplyDeleteOM FG I JUST NOTICED THAT DISSENTING JUDGE IS A GUY I KNOW. He's a new APJ that just joined up like 2 years ago. He's from an AU similar to mine and I can see the viewpoint from him as coming from his background. We have a distinct and realistic viewpoint of the world and the things going on in it that dispels the "magic" and drafting tricks software practicioners like to try to weave in claims like this one. It's really too bad he wasn't able to articulate his reasoning better.
Also, I note that I agree with the first point that the dissent made, relative terminology is a no-no and should be abolished from your software bs arts just as it has been from other more respectable arts. More APJ's will come on board as time passes. Bill's view is correct and will eventually prevail.
ReplyDeleteAfter having read the whole dissent rather than just your summary of it I find what he said to be true, except that I would disagree with him that the claim is indefinite because of the "system" interpretation. It is clearly an apparatus claim although they improperly defined the apparatus solely in terms of method steps. 112 all the same, but not for the reason that one cannot tell which statutory class it is, one can tell that blatantly it is a hybrid which are not permitted. Hitherto, IPXL held that such claims are not allowed because one cannot tell which statutory class is being claimed. That is one way of looking at claims where one genuinely cannot tell which statutory class it belongs to. However, the law needs to evolve beyond that to include cases where one can blatantly tell that the claim is a hybrid and belongs to neither statutory class. It should be fine to use 112 for this purpose as they have failed to definitely point out their invention in terms of an apparatus or a method, thus the claim is indefinite. A fine line between reasonings, but nevertheless that's what I say
ReplyDeleteI love ol' Bill though, he throws the same caselaw as I do. IPXL and Miyazaki. Awesome ;)
>relative terminology is a no-no and should be
ReplyDelete>abolished from your software bs arts just as it
>has been from other more respectable arts.
Surely you're not suggesting that relative terms are per se indefinite? The dissent merely said that relative terms are indefinite when you can't figure out the baseline for the comparison. Nothing ground-breaking about that position.
Anonymous, thanks for your voluminous comments. I need some time to digest.
ReplyDelete"Nothing ground-breaking about that position."
ReplyDeleteNo, I agree with that position. Perhaps I should have been more clear, relative terminology that either the spec, claims or art does not provide a way to judge what it is relative to should be abolished. In my cases that just so happens to be nearly synonymous with "relative terms" because hardly anyone uses them properly before I make them.
And I agree there is nothing ground breaking about that position, I'm surprised that the majority didn't go ahead and enter the rejection as well.
Oh and actually some of my earliest comments above were mistaken, Bill was right, there are some intended use limitations as well as some method of making limitations (wherein no further hardware is installed at the premises etc.) as well as some method of using limitations. They just threw them all in together.
Although, I do disagree with Bill reversing the 103 because the examiner couldn't possibly make the rejection. Even hopelessly indefinite claims can have a 103 levelled against them, at least in so far as they are interpretable. I do agree with him that the 103 might not be 100% valid in those situations because of the indefiniteness, but they are valid in so far as they can be disregarding the indefiniteness.
>there are some intended use limitations as well
ReplyDelete>as some method of making limitations ...
>as well as some method of using limitations.
>They just threw them all in together.
The topic of indefiniteness under Amazon v. IPXL is interesting enough for its own post -- which I may get around to some day.
But until I do, and since you're hanging out here now, I'm curious about your position on the following question.
What magic words *should* an Applicant use in apparatus claims to avoid this sort of indefiniteness rejection? Off the top of my head, here are some possibilities to consider:
a server configured to store
a server operable to store
a server that stores
a server for storing
a server storing
[whatever else can you think of]
First I'd like to note that there should be no "magic words" that could be recited to avoid such a rejection and still claim the same thing.
ReplyDeleteBut, if you aren't concerned that the courts are going to come down hard on this nonsense in the not so far off future then we can discuss things a bit I suppose as to what might be decent enough to get through the office.
"a server configured to store
a server operable to store "
Those two are the best out of your suggestions. The first one being the very best.
Alternatively if you absolutely had to talk about some information on a server you could just say:
A server with information identifying one or more callers and pre-set ringer types associated with each of said callers for each subscriber contained (recorded?) therein...
Personally I'd just say "a server" because that is the structure. If I had to go into the configuration of the server then I would recite the actual configuration. I would not recite what it was configured to do, and certainly would not simply use "configured to" as a proxy for an introduction to functional/intended use language such as "store" or "storing". Functional and intended use nonsense would have no place in my claiming strat. But that's just me, if you're tasked with getting someone a patent on an apparatus that is no different than one in the prior art save for some function, meh, well, gl sister. Just hope you get lucky.
Now, if you want to use method steps, like "storing" then by all means, write a method claim.
"storing blah blah blah in a server" is a great example of a method step.