Monday, May 14, 2012

BPAI rejects dependent "computer usable medium" claims for failing to limit the independent claim

Takeaway: The BPAI entered two new grounds of rejection under § 112 for a set of dependent computer-usable medium claims. The Board rejected under § 112 Fourth Paragraph for failing to limit the independent claim, in that the preamble of independent claim 11 read "a computer-usable medium comprising a computer product" while the dependent claims read "the computer product of claim 11." The Board also rejected under § 112 Second Paragraph as being indefinite, finding that an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims." (Ex parte Buros, BPAI 2011.)

Details:

Ex parte Buros
Appeal 2009009738; Appl. No. 11/268,931; Tech. Center 2100
Decided  June 20, 2011

The application was directed to aggregation of data using policies. The Examiner finally rejected all independent claims as being anticipated and all dependent claims as being obvious. A set of "computer usable medium" claims were also rejected under § 101.

The computer-usable medium claims read as follows:
     11. A computer-usable medium comprising a computer program product and operable by a data processing system for managing data, the computer program product comprising:
     program code for identifying a policy for managing the data in a data storage system;
     program code for locating raw data in the data storage system for processing to form located data;
     program code for aggregating the located data based on the policy by summarizing the located data to form aggregated data such that the aggregated data is in a condensed form with respect to the located data by not including all of the located data in the aggregated data; and
     program code for storing the aggregated data in the data storage system.

     12. The computer program product of claim 11, wherein the program code for identifying a policy for managing the data in a data storage system comprises:
     program code for retrieving aggregation metadata from a server to identify the policy, wherein the aggregation metadata contains information used to aggregate the located data.

According to the Examiner, the medium claims were "drawn to a form of energy." The Examiner explained that energy is "not a series of steps or acts and thus is not a process," "is not physical nor an object and as such is not a machine or manufacture," and "is not a combination of substances and therefore is not a composition of matter."

The Board affirmed some of the prior art rejections and reversed others. The Board did not reach the § 101 rejection of the "computer usable medium" claims, instead entering a new ground of rejection of the dependent claims under § 112 2nd Paragraph and/or 4th Paragraph. 

According to the Board, each of dependent claims 12-15 and 17 "purports to provide further limitations with respect to the 'computer program product' of the independent claim." However, as written the dependent claims do not require the "computer usable medium" of the independent claim. Therefore, each dependent claim is broader in this respect than the independent claim, and thus fails under § 112 4th Paragraph to further limit the claim from which it depends.

As to the indefiniteness rejection, the Board found that the scope of dependent claims 12-15 and 17 is not readily ascertainable because "the dependent claims appear to be directed to only a portion of the invention as set forth in independent claim 11." Therefore, an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims."

My two cents: I've seen at least a dozen ways of formulating what is commonly referred to as a "computer readable medium" (CRM) claim. In some cases, like this one, it can be hard to figure out what exactly is being claimed. Presumably the "medium" is claimed because case law has recognized this as an article of manufacture. But why claim the "product"? And do you claim "code" (as was done here) or do you claim steps, or .... what?

As this case shows, formulating dependent claims for CRMs can be even trickier than for independents. I don't think Examiners are picky about this, so perhaps you don't see any reason to be concerned. But I think the Board was right, and you might as well write your dependent CRM claims properly. This sort of problem is trivial to fix – in fact, the Applicant here fixed it after the BPAI decision. So why wait for the Board – or worse yet, an accused infringer – to bring up a 112 Fourth problem?

One unusual aspect of this case was that no independent claims went up on appeal. The Applicant filed an After Final amendment which cancelled all independent claims and rewrote various dependents into independent form. However, the Examiner refused to enter the After Final amendment, noting in the Advisory Action that it "raised new issues that would require further consideration and/or search" ! So the Applicant withdrew the independent claims and a number of dependent claims in the Appeal Brief, and thus only dependent claims were considered by the Board.

Why did the Examiner refuse to enter the rewrite-dependent-into-independent-form amendments? Such an amendment doesn't change the scope of the claim, so logically, how could it require further consideration, much less a new search? The Applicant argued that the amendment put the case into "better form for appeal", which is a category of amendment that is allowed under § 1.116. Even if § 1.116 doesn't require the Examiner to enter it, it does sound like that one that MPEP 714.13 suggests should be entered, namely, it requires only cursory review:

Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection.

Finally, from a practical standpoint, how much work could it possible be for the Examiner to enter this? Is the Examiner just hoping to push the Applicants into an RCE?

One more observation. As noted above, when the Examiner refused to enter the After Final amendments, the Applicant reacted by "withdrawing" the independent claims in the Appeal Brief. The other option would be to file an After-Notice-of-Appeal amendment that rewrites the dependents into independent form. The rules for entry of amendments after appeal (§ 41.33) are different than the rules for entry After Final (§ 1.116), such that the Examiner is required to enter this same amendment after appeal.


26 comments:

  1. I was going to mention Bd.R. 33, then I read your last paragraph. I think Br.R. 33 is widely regarded as narrower than 1.116. So if an amendment passes Bd.R. 33, it should pass Rule 116.

    Of course, to traverse this, the Applicant could have filed a 1.181 petition. Ha! The PTO seems to have a policy of deciding those late and/or incorrectly.

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  2. OK, I claim "an automobile comprising an engine having 8 cylinders" as an independent claim. One of the dependent claims is "the engine of claim 1, wherein the engine further includes a fuel injector." This certainly wouldn't be a "preferred" format for claim language but it is neither indefinite (i.e., 2nd paragraph of 112) nor does it fail to "specify a further limitation on the subject matter claimed" (i.e., 4th paragraph of 112).

    "However, as written the dependent claims do not require the 'computer usable medium' of the independent claim."
    BS – The law clearly states "A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers." Notice the use of "shall" and "all the limitations." It is not optional. Therefore, the claims MUST be construed to include all the limitations of the referenced claim. The BPAI is like my current paralegal (and most paralegals I have ever worked with) – OK doing things like they have always done them, but don't throw them any type of curve because they won't know what to do.

    "As this case shows, formulating dependent claims for CRMs can be even trickier than for independents."
    Hardly. As I suspected, during prosecution, the preamble of claim 11 was amended from "[a] computer program product comprising: a computer usable medium" to the form at the BPAI. When the attorney amended the claims, they should have amended the dependent claims as well – simple mistake.

    "Why did the Examiner refuse to enter the rewrite-dependent-into-independent-form amendments?"
    Because the Examiner is ignorant or an azz.

    "Is the Examiner just hoping to push the Applicants into an RCE?"
    Bingo …. we have a winner

    "Presumably the 'medium' is claimed because case law has recognized this as an article of manufacture. But why claim the 'product'? And do you claim 'code' (as was done here) or do you claim steps, or .... what?"

    You claim the computer program product that comprises a computer readable medium. The computer readable medium has stored thereon program code. The program code causes a computer to perform certain steps. Ultimately, the intent it to claim what is on the computer readable medium. That the program causes the computer to perform certain steps is how you distinguish the invention from the prior art. When you recite steps, you aren't claiming them "per se" (i.e., the steps do not have to be performed for this claim to be infringed). Instead, they are how the computer readable medium is distinguished from other computer readable mediums.

    The reason why a "computer program product" is claimed is because that is how the originally-issued Beauregard claim was written (see claim 2 of USP 5,710,578).

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    1. >"computer program product" is claimed
      >is because that is how the originally-
      >issued Beauregard claim was written

      You're saying In re Beauregard is why the claim on appeal in Buros recites both the product and the medium?

      Sure, the Beauregard claim did include both. Though in the opposite order:

      2. A computer program PRODUCT ... comprising: a computer usable MEDIUM having computer readable program code means embodied in said medium

      AS OPPOSED TO

      11. A computer-usable MEDIUM comprising a computer program PRODUCT ... comprising: program code for ...

      Plus, the Beauregard claim had "means" tacked on to "code". So Buros didn't feel the need to slavishly copy the Beauregard claim format.

      That's kinda my point. There are a million ways to write a CRM claim. And, further, nobody knows which one(s) is the *right* way. After all, In re Beauregard itself didn't even reach the question (PTO withdrew it's case).

      And even if there was one or more "right" ways to draft a CRM claim in terms of passing muster under 101, there is no guidance whatsoever on how any of these formats make a difference when it comes to infringement.

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  3. "It is not optional."

    Which is why it was rejected.

    "Instead, they are how the computer readable medium is distinguished from other computer readable mediums."

    At least in a world where courts buy into such nonsense. Thankfully we have the CAFC that has indicated a willingness to interpret B claims as methods. As well as district courts that don't buy into such nonsense at all.

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    1. "Which is why it was rejected."

      6 -- your understanding of statutory law is woeful. The dependent claim clearly limited the independent claim ... and by definition, the dependent claim includes all of the limitations of the independent claim. The BPAI cannot argue that it didn't because it MUST be construed to include all of the limitations. The BPAI is construing the claim as requiring only some of the limitaitons of the independent claim -- that is not proper.

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    2. Re "statutory law" -- the "shall be construed" in 112 paragraph four comes after the definition of a "claim in dependent form." The claim must first meet the definition of a claim in dependent form.

      Note also that 112 paragraph two says that the specification "shall conclude" with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Therefore, all claims are definite.

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    3. Another person who cannot read.

      The "shall conclude" is a directive made to the applicant.

      The "shall be construed" is a directive to someone construing a dependent claim.

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    4. I see you conveniently skipped over the "definition" part (since we know you can read).

      Anyhow, perhaps you should explain your "shall be construed" theory to Judges Michel, Schall, and Dyk (Pfizer, Inc. v. Ranbaxy Labs. Ltd.).

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    5. Indeed, this person appears to have conveniently skipped over the definition part.

      Like the good poster said, why don't you go explain your position to Michel, Schall and Dyk? Because currently we're living under their statutory interpretation.

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    6. Lots of people who cannot read either statutory law or case law (must be patent examiners)

      "The specification SHALL contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and SHALL set forth the best mode contemplated by the inventor of carrying out his invention."
      The "SHALL" is a requirement of the specification (i.e., the burden is on the applicant)

      "The specification SHALL conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."
      The "SHALL" is a requirement of the claims (i.e., the burden is on the applicant)

      "Subject to the following paragraph, a claim in dependent form SHALL contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form SHALL be construed to incorporate by reference all the limitations of the claim to which it refers."
      The first "SHALL" is a requirement of the claims (i.e., the burden is on the applicant). The second "SHALL" involves how the claim is to be construed – i.e., a directive to parties OTHER THAN the applicant (e.g., the USPTO).

      Regarding "Pfizer, Inc. v. Ranbaxy Labs. Ltd.," this is what the Federal Circuit wrote: "[i]n other words, claim 6 does not narrow the scope of claim 2; instead, the two claims deal with non-overlapping subject matter … "Ranbaxy correctly argues that claim 6 fails to 'specify a further limitation of the subject matter' of the claim to which it refers because it is completely outside the scope of claim 2. We must therefore reverse the district court with respect to this issue and hold claim 6 invalid for failure to comply with § 112, ¶ 4."
      This is very unlike the situation of the present claims, in which the claims did "specify a further limitation of the subject matter claimed." The 4th paragraph of 35 U.S.C. § 112, contains TWO sentences. The Federal Circuits decision touched upon the failure of Applicant to perform the first "SHALL" (as noted above, this is a requirement of the claim and the applicant's burden). Until the claim is in proper dependent form, the second sentence of the 4th paragraph of 35 U.S.C. § 112 does not kick in.

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    7. Ding! Ding! Ding! Not bad, except for your conclusion. If you trace back, you will see that you failed to recognize what "the subject matter" of claim 11 is.

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    8. The subject matter of claim 11 is a computer-usable medium comprising a computer pogram product. Claim 12 propoerly referenced claim 11. Claim 12 placed a limitation on the computer program product (and hence, the computer-usable medium since the computer-usable medium comprises the computer program product). Thus, the subject matter of claim 11 has been limited.

      Pretty simple.

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  4. "Presumably the "medium" is claimed because case law has recognized this as an article of manufacture"

    Someone needs to reread Cybersource.

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    1. Ah, note that I didn't actually refer to *current* case law, instead I was careful to refer to past case law ("has"). Next, Cybersource does not negate my point, since Cybersource does not say that CRM claims are not articles of manufacture. Finally, the claims on appeal were written years before Cybersource, so I think it's safe to assume that if the drafter was thinking about case law, he was thinking about Beauregard, not Cybersource.

      I recognize that Cybersource says that claiming a CRM is not, in itself, enough to get you over 101. So what? That doesn't mean everyone should abandon CRM claims.

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    2. "Next, Cybersource does not negate my point, "

      Yea it does.

      "since Cybersource does not say that CRM claims are not articles of manufacture. "

      http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1358.pdf


      "Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information."


      Hmmm, I suppose it is true that they were only talking about the specific claims at issue, but much the same could be said for any B claim. The invention is not the medium, the invention is the steps, i.e. the method.

      "Finally, the claims on appeal were written years before Cybersource, so I think it's safe to assume that if the drafter was thinking about case law, he was thinking about Beauregard, not Cybersource. "

      No drafter of B claims is thinking about the lawl or about case law. They are thinking about trying to bilk people out of money using a scheme that IBM came up with and which the PTO has not stamped out.

      "I recognize that Cybersource says that claiming a CRM is not, in itself, enough to get you over 101. So what? That doesn't mean everyone should abandon CRM claims."

      No, it doesn't. But the burden being placed on the applicant to demonstrate that the claims were truly drawn to a specific apparatus distinct from other apparatuses capable of performing the identical functions does. That's court french for saying ez 102b when the claim is properly interpreted which is why they pulled that bs claim construction to help the applicant out of the ez 102.

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    3. >>since Cybersource does not say that
      >>CRM claims are not articles of
      >>manufacture.

      >Yeah, it does.
      >OK, they were only talking about the
      >specific claims at issue

      That's what I was trying to say.

      Cybersource does not say, categorically, that no CRM claims are directed to articles of manufacture.

      It says that you have to look past the words of the claim (which might say article of manufacture) to decide whether or not the "underlying invention" falls into a statutory category.

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    4. "Cybersource does not say, categorically, that no CRM claims are directed to articles of manufacture. "

      No but it does instruct district courts in how to properly interpret b claims. First, put the burden on the patentee to show that their claims are directed to articles of manufacture. Then, should they accomplish this probably impossible feat, tell them they claimed a method.

      "It says that you have to look past the words of the claim (which might say article of manufacture) to decide whether or not the "underlying invention" falls into a statutory category."

      Actually claim construction is done on a per claim basis and not done differently for different sections of the statute.

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  5. >claims were truly drawn to a specific
    >apparatus distinct from other apparatuses
    >capable of performing the identical functions
    >does.
    >ez 102b when the claim is properly interpreted

    I'm not following you here with the switch from 101 to 102.

    Are you talking about patentable weight? Or rather, about not giving some of the claim terms patentable weight?

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    1. If the claims are truely drawn to a specific apparatus (or product, whichever way you prefer to think of it, although the CAFC says apparatus) DISTINCT FROM OTHER APPARATUSES capable of performing the same function (i.e. novel) then the court would not even think to throw the burden to show that on the patentee. Since they are not directed to a specific apparatus the court bses on the claim construction to save them from a quick death from lack of novelty.

      And no, you most certainly give all the "functional" limitations weight. The weight they are given however fails to assist in distinguishing from any old CRM in the market in 1980. This is because the actual structure that makes up the apparatus and performs the "function" is specifically ANY CRM.

      An easier way to see this Karen is to ask yourself what a species of the functionally defined CRM would be if you took it upon yourself to think about what structure would perform the function. If you don't know, I can help you out, one of the species encompassed by any B claim is a CRM with a 1 or a 0 thereon. They've pretty easy to find.

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    2. "And no, you most certainly give all the 'functional' limitations weight. The weight they are given however fails to assist in distinguishing from any old CRM in the market in 1980. This is because the actual structure that makes up the apparatus and performs the 'function' is specifically ANY CRM.'

      OK ... please take your Office 98 CRM and try to make it run Office 2011. When you are succesful, let me know and I'll buy your arguments. Until then, I say you are full of BS.

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    3. I don't make "arguments" in actions. I never touch such foul things in my professional work save on accident in some very rare circumstances or when I was inexperienced. I make objections/rejections and explanations thereof as well as responses to attorney arguments occasionally. I also make claim constructions on occasion in explanations of objections/rejections.

      And in CRM cases it is the claim construction which is at issue, not some "argument". Also note that I do not argue about the claim construction, I pronounce what the office's construction is, and allow the applicant to tell us if it should be different and how. So far I've had no takers. It seems that I do indeed have the correct claim construction on the record in my cases.

      In any event, why have me execute your little experiment? Why not pay your own programmer to do it?

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    4. "I pronounce what the office's construction is, and allow the applicant to tell us if it should be different and how. So far I've had no takers. It seems that I do indeed have the correct claim construction on the record in my cases."

      Big talk 6 for someone who doesn't even practice in an art unit does doesn't see a lot of these claims. Try that with me, and I'll give you your first law school lesson for free.

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    5. "Big talk 6 for someone who doesn't even practice in an art unit does doesn't see a lot of these claims. "

      You might have heard of this thing called the COPA.

      "Try that with me, and I'll give you your first law school lesson for free."

      Why not give it to me now? All the time with the threatening, big talking and all what not. I hear it alot from the same attorneys that don't want to provide another construction lest they leave themselves without an infringer or without a leg to stand on in terms of WD.

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    6. And just in case you're not familiar COPA is the program wherein examiners from good AU's go and help out the examiners in bad AU's that couldn't get their date goals met. In other words, its where the good examiners like myself have to come down from our ivory tower arts and go mix with the rabble that produce crp like B claims. And trust me, that sht ain't pretty.

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  6. This has less to do with the form of the claim and more to do with the Examiner looking to squeeze another count or two from the prosecution. If the applicant had simply filed an RCE, I have no doubt that the next OA would have been a Notice of Allowance.

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