In this post, I'll take a look at some PTAB decisions involving Written Description rejections. It's a mixed bag, with some affirmances and some reversals.
The Board reversed a Written Description rejection in Ex parte Davis (PTAB 2011). The originally filed claims recited "a computer readable medium or media having thereon a method." The Examiner gave a § 112 First, Written Description requirement to this claim, alleging that "there is no support in the originally filed specification for a computer readable medium or media." The same claim was also subject to an indefiniteness rejection, as it was allegedly "unclear how a computer readable medium could 'have thereon' a method."
To overcome the indefiniteness rejection, the Applicant amended the claim to recite "a computer readable medium encoded with computer executable instructions which, when executed by the computer cause the computer to perform the steps of." With respect to the enablement rejection, the Applicant made two arguments.
First, the Applicant noted that "this application is drawn to computer based lookups by collisionless direct tables and CAMS and inherently includes [support] for a computer readable medium." Second, the Applicant noted that the original specification "states that the control function 18 which controls the operation of the CAM 10 and hashing function 16 is implemented in hardware or software." The Applicant concluded that "a computer readable medium necessarily flows from such a software implementation."
The Examiner maintained the rejection, and indicated that "this evidence does [not show] sufficient support in the original disclosure for the specific implementation using a computer readable medium which is current claimed."
The Applicant appealed and repeated these same arguments for the enablement rejection. In the Answer, the Examiner elaborated on the rejection:
In other words, the Applicant is stating that although explicit support for the claim limitations ... are not included in the original disclosure, this specific software limitation is inherent. [However.] the mere suggestion of a software implementation ("A control function (either hardware or software) 18 is provided...") only suggests support that software programming can be used instead of hardware and it does not provide adequate support for a computer readable storage medium or computer performing specific steps based on instructions stored in such a medium as presented in the claims. ... [T]he suggestion of a software implementation would only suggest that one of ordinary skill in the art can perform the desired function by writing the appropriate software program intead of hardware and does not provide adequate supoprt for a computer readable storage medium. ... This minor suggestion of a software implementation is the closest evidence of support for this subject matter in the application as originally filed. Examiner believes this specific implementation is new matter which was added after the original disclosure.The Applicant filed a Reply Brief to address the Examiner's contentions:
Storing data in memory such as a content addressable memory (CAM) in the cited portion of the originally filed specification obviously comprehends storing "computer instructions on a computer readable medium" [as recited in the claims at issue.] Content addressable memory is known to one skilled in the art as a special type of computer memory that is searched to look for particular data stored therein on constrast to random access memory (RAM) which returns data stored at that address. It is inherent that computer memory such as content addressable memory is implemented in a "computer ('hardware') having computer readable storage medium" .... The Examiner's position renders the concept of interpreting the disclose as "one skilled in the art" meaningless if this language does not lead to implementations as claimed.The Board disagreed that a computer readable medium was inherent in the specification. The Board, however, reversed the rejection on a different ground: the originally filed claims explicitly recited "a computer readable medium or media having thereon a method."
The Board affirmed a Written Description rejection in Ex parte Niemi (PTAB 2013). The Applicant added a new claim to "a computer program embodied on a computer readable medium, said computer program configured to control a processor to perform ..." The Examiner rejected the new claim under § 112 First, Written Description, alleging that "the phrase 'computer readable medium" is not properly described in the specification."
The Applicant responded to the Enablement rejection by referring to FIG. 4:
[A] process is illustrated which defines a new event package for event registrations of a user to be implemented by a registrar and used by a presence server 303. A computer terminal 123 or laptop 112 which may include a computer readable medium (see lines 23-33 of page 7 of the specification) A computer readable medium may be regarded as a computer memory which a computer terminal 123 or laptop is certain to include. Or, one of ordinary skill in the art is certain to conclude that a terminal 123 or laptop 112 includes a computer readable medium in order to carry out the functions of such a computing device.
... The presence server 303 may also be a computer readable medium because it also has a memory. Among the various operations performed in claims 38 and 39, each of these operations is performed with reference to the computer readable mediums provided by the presence server or the user. Therefore, the specification provides support for a computer readable medium, and claims 38 and 39 are in compliance with §112, first paragraph.
The Examiner maintained the rejection and went final. The Applicant appealed and made the same arguments in the Appeal Brief. The Examiner provided no additional information in the Answer.
The Board affirmed the rejection. First, the Board found that the particular page of the specification relied on by the Applicant did not describe a computer readable medium, and in fact referred to FIG. 1, not FIG. 4 as stated by the Applicant. Second, the Board found that computer terminal 123 or laptop 112 "is not identified to contain computer readable media for the entire process of FIG. 4 to embody the entire claimed process."
The Board reversed a Written Description rejection in Ex parte Visser (PTAB 2013). The application claimed priority to an EPO application, and the originally filed claims recited:
11. A computer programme comprising instructions to produce and display an image ... and comprising instructions to perform the steps of ...To overcome a 101 rejection, the Applicant amended to
11. A computer program encoded on a computer readable medium for causing the computer to execute a method to produce and display an image ... and causing the computer to perform the acts of:The Examiner issued a § 112 First, Written Description rejection and alleged that "the claim language pertaining to 'a computer readable medium' was not described in the originally filed specification."
Before appealing, the Applicant traversed the rejection and argued that "one skilled in the art would have no trouble whatsoever understanding that a computer program, as specifically recited on page 7, line 27, is stored in a memory or a computer readable device." When the Examiner maintained the rejection and went final, the Applicant argued again, this time referring to a paragraph in the specification reading "manipulations of the object data set take place within the central processor of the computer".
When the Examiner maintained the rejection and went final, the Applicant appealed.
On appeal, the Applicant quoted a paragraph in the specification that read "manipulations of the object data set take place within the central processor of a computer." The Applicant then argued that this shows possession:
As is universally known in the art, all processors contain on board memory and all computers need memory to function. The instructions on which computers operate are all stored in a computer readable storage medium (e.g. memory).The Examiner's Answer responded to these arguments by noting that while the specification describes processor a enabling manipulation of an object data set, "the processor does not cause the computer to execute a method to produce and display an image of a multidimensional volume as recited in claim 11."
The Board agreed with the Applicant's statements about how a person of ordinary skill in the art would understand the specification, and so reversed the Written Description rejection.The Board used a technical dictionary to supplement its analysis:
Appellant’s “central processor of a computer,” also known as a “microprocessor” is defined as “[a] central processing unit (CPU) on a single chip” such that “[w]hen memory and power are added to a microprocessor, all the pieces, excluding peripherals, required for a computer are present” (emphasis added). MICROSOFT® COMPUTER DICTIONARY 338 (5th ed. 2002). Because the Specification discloses a “central processor of a computer,” one of ordinary skill in the art at the time of the invention would have recognized that the computer includes a memory, thus providing written description support for a “computer readable medium.”The Board reversed a Written Description rejection in Ex parte MacKouse. The Applicant amended the computer-implemented method claims to instead recite "a computer readable media having stored therein instructions." The Examiner rejected the claims under § 112 First, Written Description. According to the Examiner, the specification did not disclose a computer-readable media, and as a result there is "no evidence that the inventor was in possession of the claimed concepts involving a computer-readable media."
The Applicant responded with two arguments in a Pre-Appeal Brief. First, "original claim 1 recited a 'computer implemented' method [and] computers inherently include computer-readable media." Second, the specification disclosed "stored procedures such as SQL procedures."
When the application was forwarded to appeal, the Applicant beefed up the stored procedures argument in the Appeal Brief:
A person of ordinary skill in art would understand the pages 46-65 of Applicant's specification to be a detailed description of stored computer programs ("stored procedures, PL/SQL stored procedure," "batch processing," "Java program," etc.) that could be used to implement the claimed invention. ... Inherently, in order for computer programs to be 'stored,' they must be stored in 'computer readable media.The Examiner's Answer included additional information. The Examiner explained that the "program" disclosed in the specification is non-statutory subject matter, and the claimed CRM is non-statutory subject matter since that term typically covers signals, "particularly when the specification is silent."
The Applicant filed a Reply Brief and argued that the word "stored" in the the preamble excluded signals.
The Board reversed the rejection. The Board first found that the specification "provided a detailed description of stored computer programs (e.g., stored procedures, PL/SQL stored procedure, Java program, etc.)" to implement the processes of the claims at issue. As a result, the Board found that "the Specification sufficiently demonstrates that the inventor had possession of a tangible medium to store the software program."
The Board affirmed a Written Description rejection in Ex parte Ohwadi (PTAB 2010). Claim 15 was originally directed to "a software element ... operative to effect or permit a download of a polling element." In response to a § 101 rejection, the Applicant amended to recite "a software element on a computer readable medium." The Examiner maintained the § 101 rejection and also added a rejection under § 112 First, Written Description. According to the Examiner, there was no disclosure for the CRM, only a mention that "the application may be stored on a device" and a PC 10 illustrated in FIG. 1.
The Applicant appealed. The Appeal Brief argued that a POSITA would understand from the specification that the "computer method disclosed therein may be provided on a computer readable medium." The Applicant further argued that the "disclosure of computer implemented methods would imply to the skilled person the use of computer readable media."
The Examiner elaborated on the rejection in the Answer as follows:
The disclosure of [device with storage and a PC] is not similar in scope to the term "computer readable medium" ... [According to the Dictionary of IEEE Standards Terms], the term "computer readable medium" includes both storage and transmission medium, this scope is different from what was disclosed in the instant specification.The Board affirmed the rejection with the following explanation:
Appellants’ arguments supra (App. Br. 7) fail to point to any specific portion of the Specification that would have purportedly conveyed with reasonable clarity to those skilled in the art that Appellants were in possession of the disputed claim limitation (a computer readable medium). Thus, we find Appellants have made no showing explaining why a person of ordinary skill would have understood, at the time the application was filed, that the description requires a computer readable medium.My two cents: Every one of these rejections should have been reversed.
(Emphasis added, original citations omitted.)
The Board doesn't give the person of ordinary skill in the computer arts enough credit. When such a POSITA comes across "computer implemented method" or similar phrasing, the POSITA immediately appreciates that this encompasses a software implementation of the method. The POSITA further appreciates that a software implementation requires a processor to execute the instructions making up the method, and storage from which to execute the instructions. The POSITA further appreciates that "computer readable medium" (and variants of that phrase) covers such storage.
I just don't see how anyone who has ever programmed a computer can question the truth of these statements, or the conclusion drawn from them that a mention of "computer implemented method" does show possession of claims to a CRM.
Now, the Board does go off track if the phrasing of the Applicant's arguments suggest that the CRM is "obvious" in light of the spec. Don't say this, as obvious is the wrong standard for Written Description. I've also seen the Board treat Applicant arguments about what the spec "implies" as "obvious" arguments. (See my post here for my thoughts on why the Board is mistaken, and stuff implied by the spec do suffice for written description.) So you gotta stay away from the word "obvious" and I'd probably stay away from "implied" also. Point to where computers are mentioned in your spec, point to where the spec ties those computers to the claimed functionality, and explain all that a POSITA takes away from these sections.
To increase your chances of winning, don't rely solely on attorney argument. Refer to definitions or technical encylopedias. Or if you really want to have the best shot at winning, get a declaration under § 1.132 to explain this stuff.