Ex parte Hofstee
Appeal 2009006207; Appl. No. 10/763,079; Tech. Center 2400
Decided: February 24, 2011
The Applicant was directed to secure electronic communications. Original claim 22 recited
22. A computer program product for secure communications, the computer program product having a medium with a computer program embedded thereon, the computer program comprising:When this claim was rejected under § 101, the Applicant amended to add "computer readable":
22. A computer program product for secure communications in a message source, the computer program product having a computer readable medium with a computer program embedded thereon, the computer program comprising:The Examiner then gave a § 112 First, Enablement rejection, alleging that "the Applicant fails to sufficiently point out or describe computer readable media." The Applicant appealed this rejection, along with prior art rejections.
In the Appeal Brief, the Applicant pointed to the following passage in the specification as evidence of enablement:
It is further noted that, unless indicated otherwise, all functions described herein may be performed in either hardware or software, or in some combinations thereof. In a preferred embodiment, however, the functions are performed by a processor such as a computer or an electronic data processor in accordance with code such as computer program code, software, and/or integrated circuits that are coded to perform such functions, unless indicated otherwise.The Applicant also argued that:
[C]omputer readable media, such as floppy disks, magnetic tape, hard disk drives, random access memories, flash memories, optical disks, and the like are so notoriously well-known that a person of ordinary skill in the art would not require any undue experimentation to store computer code that performs the functions described in the instant specification onto a computer readable medium.The Board reversed the rejection because the passage quoted above from the Applicant's specification disclosed "at least one embodiment of a medium as an integrated circuit coded to perform functions." The Board noted that enablement did not require a specification to disclose what is well known in the art (Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984)), and that "omission of minor details does not cause a specification to fail to meet the enablement requirement." Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
My two cents: The Applicant was smart to focus on "undue experimentation," since the Examiner did reject under Enablement rather than Written Description. By its very nature, enablement is about what a POSITA knows and what a POSITA understands from Applicant's specification. In the computer and electronics arts, the amount of detail required about specific implementation mechanisms is relatively low. You don't need much detail about processors, logic circuits, memory, and storage. As long as enough detail is present about the claimed functions, a POSITA can generally figure out how to implement that functionality on the appropriate hardware or software platform. So it didn't surprise me that the Board reversed this Enablement rejection.
Now, had this been a § 112 First rejection under Written Description, the story would be different. In that case, the Board is less likely to be persuaded with arguments about what a POSITA knows, because the focus is instead on what the inventor possessed.
Examiners are sometimes sloppy about the distinction between Enablement and Written Description. (As is the Board ... see BPAI confuses enablement and written description.) For this reason, I read all § 112 First and Second rejections very carefully. I've even seen an Examiner throw in § 101, Enablement, Written Description, and indefiniteness, giving essentially the same explanation for all.