Takeaway: In Ex parte Miyata, the Board rejected a Jepson style system claim under 112 § 2nd (indefiniteness). The Board paraphrased the claims as follows:
In a video camera system capable of [performing specified functions], the video camera system being characterized in that [under certain circumstances, specified phenomena occur].The Board concluded that "it is simply not reasonably clear what statutory class claim 5 is intended to be directed."
Details:Ex parte Miyata
Appeal 2009-008927, App. No. 10/347,865, Tech. Center 2600
Decided: February 25, 2010
The claim at issue read:
5. In a video camera system capable of carrying out panning/tilting control of a camera device and capable of displaying a video imaged by the camera device on a monitor as well as superimposing a mask image on an arbitrary area within a range of imaging with the camera device,
the video camera system being characterized in that
in a case where the mask image is moved, the size of the mask image is corrected both forward and backward or either forward or backward in the direction of movement, the amount of correction of said mask image is adjusted depending on the movement speed thereof and the amount of correction increases as the movement speed increases.
The Board first explained that "system" can be either an apparatus or a method, quoting a dictionary definition ("system: any formulated, regular, or special method or plan of procedure") for support of this statement. The Board then noted that often the body of a claim clarified which statutory class was intended, but found no clarification here.
Rather, the balance of claim 5 merely states that the “system”—or field in which the invention is used – possesses certain characteristics. One of ordinary skill in the art, then, is not put on reasonable notice of whether claim 5 is intended to be directed towards process steps (e.g., changing the sizes of mask images) or alternatively directed towards structural elements (e.g., a video camera, a pan/tilt controller, a video monitor, and specially programmed processor).The Board then assumed that the claim was an apparatus, and that the entire "video camera system" was not claimed, since the claim recited "in a video camera system." The Board still found that it was not clear exactly what structure was being claimed:
- A processor programmed to perform the claimed functions, but not the other components mentioned (video camera, pan/tilt controller, and/or video display monitor)?
- A computer-readable medium encoded with software to perform the claimed functions, but not the processor which executes the software?
- The software per se?
- The corrected, enlarged mask image?
My two cents: I gotta admit this is one of the most incomprehensible claims I've ever seen. Perhaps a bad translation is to blame: the application claims priority to a Japanese application.
The Board's focus on statutory classes in the context of indefiniteness is a bit unusual. I usually see this sort of analysis in § 101 rejections. The claim's real problem is the confusion about the structural elements. So I'd reject as indefinite for that reason alone, and not bother with any discussion of statutory classes.
I certainly agree with the Board's refusal to rule on the prior art rejections — you need some degree of certainty about claim scope in order to discuss the prior art.
The Board's holding that the preamble term "system" could be interpreted as a method in this application is ridiculous. (Same issue came up in a previous BPAI decision, see my previous post here.)