Means Plus Function and Patent-Eligible Subject Matter: Conflicting Opinions at the PTAB

Posted by: Adam Ellsworth

The MPEP contains a very specific rule at section 2181(II)(B) directed to the interpretation of means-plus-function claims to determine if the claim is directed to patent-eligible subject matter. This section states that means-plus-function limitations should not be interpreted as including non-structural (e.g. software only) embodiments. This rule appears to be an exception, or a carve-out, of the general rule that if a claim covers both statutory and non-statutory embodiments under the broadest reasonable interpretation, the claim is directed to non-statutory subject matter. (See MPEP 2106(I)).

Below are two cases decided by the PTAB that were each faced with means-plus-function claims, and each applied a different rule to arrive at opposite conclusions.

Ex parte Walker

In Ex parte Walker, Appeal No. 2010-012277 (Decided June 14, 2013), the claim-in-question was as follows:

44. A computer-implemented apparatus in a server for inserting a content into a content stream for rendering on a mobile user device, the apparatus comprising:
first means for generating an annotation parameter having a content identifier and an insertion point indicator;
second means for inserting the annotation parameter into the content stream; and
third means for transmitting to the mobile user device the content to be inserted at the mobile user device and being associated with the annotation parameter, before transmitting the content stream to the mobile user device.

Regarding the terms "server" and "mobile user device" in the preamble, the Board did not address these terms in detail, and instead stated only: "We are not persuaded of error." Regarding the "means-plus-function" limitations in claim 44, the Board cited MPEP 2106(I) which states that claims covering both statutory and non-statutory embodiments are directed to non-statutory subject matter.  The Board also stated that the "means" could be wholly embodied in software, and the Board sustained the rejection of the claims under 35 U.S.C. 101. Ultimately, the Board affirmed all the rejections under 35 U.S.C. 101, and affirmed only some of the rejections under 35 U.S.C. 103(a).

Ex parte Hillis

On the other hand, in Ex parte Hillis, Appeal No. 2010-007389 (Decided June 21, 2013), the Board arrived at the opposite result regarding the patent-eligibility of claims including means-plus-function language. In Hillis, the claim-in-question was as follows:

17. A system comprising:
means for determining an organization of at least one content of at least one spatial data storage system; and
means for defining a schedule of content transmission in response to the organization of the at least one content of the at least one spatial data storage system, the schedule expressly identifying the content by one or more times.

In each case, the claim-in-question included means-plus-function limitations having corresponding physical structures described in the specification. However, in Hillis, the Board cited the Federal Register at 76 Fed. Reg. 7168 (Feb. 9, 2011), which corresponds to MPEP 2181(II)(B). This section states, in a relevant part:

"Often the supporting disclosure for a computer-implemented invention discusses the implementation of the functionality of the invention through hardware, software, or a combination of both. In this situation, a question can arise as to which mode of implementation supports the means-plus-function limitation. The language of 35 U.S.C. 112, sixth paragraph requires that the recited “means” for performing the specified function shall be construed to cover the corresponding “structure or material” described in the specification and equivalents thereof. Therefore, by choosing to use a means-plus-function limitation and invoke 35 U.S.C. 112, sixth paragraph, applicant limits that claim limitation to the disclosed structure, i.e., implementation by hardware or the combination of hardware and software, and equivalents thereof. Therefore, the examiner should not construe the limitation as covering pure software implementation."

The Board stated that, according to the rules set forth in the Federal Register, the means-plus-function limitations should not be construed to encompass software embodiments. The Board held that the claims-in-question were directed to patent-eligible subject matter and reversed the rejections under 35 U.S.C. 101, although the Board upheld the Examiner's prior art rejections of the claims under 35 U.S.C. 102.

My two cents:

I think the panel in Hillis got it right here. While the panel in Walker applied a general rule of claim construction, MPEP 2181(II)(B) carves out a specific exception in the case of means-plus-function language. Examiners still apply the "broadest reasonable interpretation," but it is not reasonable to interpret specification-supported means-plus-function limitations as patent-ineligible subject matter, since, by definition, these limitations are directed to "structures" and "materials" described in the specification.

Ideally, this type of rejection would be handled prior to appeal by citing MPEP 2181(II)(B) to the Examiner, because the explicit language in the MPEP is more persuasive to an Examiner, for whom the MPEP is their guide for examining applications, than for a PTAB panel. The PTAB is more likely to cite Federal Circuit or Supreme Court precedent rather than the MPEP, and may disregard the Federal Register or MPEP, as the panel did in Ex parte Walker.

There's an interesting prologue in Walker: the Examiner contacted the Appellant after issuance of the Board's decision, and the Appellant agreed to cancel the claims for which the Board upheld rejections under 35 U.S.C. 103(a). For the remaining claims, including claim 44, above, the Examiner issued a Notice of Allowance, without substantial amendments to the claim, effectively withdrawing the rejection under 35 U.S.C. 101 after it was upheld by the Board. 

Board says newly cited reference is not a new ground of rejection since it's in the priority chain of previously used reference

Takeaway: The Applicant appealed an obviousness rejection based on three references, and argued that the primary reference Huang did not teach an element as asserted by the Examiner. The Examiner's Answer "further submitted" another reference, Dresti, "to clarify any doubt as to the scope of [the primary reference's] disclosure." The Answer noted that Dresti was in the priority chain of Huang. The Applicant filed a Reply Brief, arguing that the introduction of Dresti on reference for the first time in the Answer was improper, but not substantively addressing the teachings of Dresti. The Board affirmed the rejection and noted in passing that "Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection."

Details:

Ex parte Hardacker
Appeal 2012007118; Appl. No. 11/970,8581; Tech. Center 2400
Decided:  September 30, 2013

The application on appeal was directed to a system including a TV remote control. One of the limitations at issue read: "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element."

The Examiner rejected the independent claims as obvious over a combination of three references: Huang, Woolgar, and Day.

On appeal, the Applicant argued that Huang did not disclose the "single manipulation" element highlighted above. More specifically, the Applicant argued that Huang taught a single keypress controlling a single component, rather than “controlling two separate components with a single key press.”


The Answer included a rebuttal with quotes to several specific sentences of Huang that allegedly disclosed a single keypress controlling multiple components. After quoting these teachings in Huang, the Answer relied on another reference, Dresti:

     Furthermore, the Examiner submits the teachings of Dresti et al. (US 2003/0103088 A1 "Dresti") for which Huang is a continuation-in-part (related US Application 10/288,727). Dresti details the "home theater" and "macro" functions of Huang by disclosing that ... [quote omitted].
     It is the Examiner's position that Huang's disclosure of "home theater" and "macro" functions "grouped under a single designator" sufficiently addresses the disputed limitations of Claim 1. However, to clarify any doubt as to the scope of Huang's disclosure, the Examiner further submits the teachings of Dresti to provide explicit evidence that Huang's macro functions would read on "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element. .." (as summarized above). Therefore, even as narrowly argued by Appellant, the Examiner submits that the Huang's concepts of "home theater" and "macro" functions address the disputed limitation of Claim 1.

In a Reply Brief, the Applicant argued that the Examiner's reliance on Dresti was improper:

     [T]he Examiner discusses a new reference - Dresti. Appellant notes that the discussion of Dresti may only be found in the rebuttal section of the Answer. The use of this new reference has not heretofore been made, nor does it form part of the formal rejections that are the subject of this appeal. To the extent that the conferees are relying on the stated grounds of rejection, the discussion related to the newly-discovered teachings is irrelevant and has not been seasonably presented. To the extent that the conferees are trying to back into a new ground of rejection without saying so, a new ground of rejection in an Examiner's Answer is not permitted without the approval of the Technology Center Director, MPEP 1207.03.
     Accordingly, the rebuttal section either contains a citation to and discussion of a reference not heretofore relied on, and consequently is irrelevant to the issues being appealed, or it is an attempt to cloak a new rejection under the guise of purported teachings of a reference slipped in only during the rebuttal stage of an Answer, and consequently is illegitimate under the rules. In either case, the rejections merit reversal.

The Board affirmed, finding that "Huang as further described in Dresti" would have "at least suggested" the limitation at issue:

     Huang describes controlling multiple appliances in a “home theater” or “room” mode, as well as user programming of remote control keys, assigning appliances to various remote control modes, creating macros, and assigning related variable functions to a single designator. Further, as explained by the Examiner (Ans. 23), it is known in the prior art to use macros to control multiple appliances using a sequence of commands by pressing a single button, as demonstrated by Dresti. Thus, we conclude, as the Examiner does, that Huang (as further described in Dresti) would have at least suggested controlling multiple components using a single remote control button press.

The Board also quickly dismissed the Applicant's argument that Dresti was a new reference that formed part of a new ground of rejection.

Dresti demonstrates that the control of multiple components using the press of a single button is known in the art. Further, Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection.

My two cents: The Board got this one wrong – reliance on Dresti should have been a new ground of rejection – but the Applicant didn't handle it properly.

The standard for determining whether a rejection is new is whether appellant has had before the PTO "a fair opportunity to react to the thrust of the rejection." In re Jung, 637 F.3d 1356, 1365 (Fed.Cir.2011), quoting In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). The way I see it, the Examiner's Answer changed the thrust of the rejection by newly relying on Destri. The Applicant wasn't aware during prosecution that the Examiner was relying on additional teachings in Destri, and thus didn't have an opportunity to rebut these findings. The Board seems to think that the family relationship between the actually-relied-upon reference (Huang) and the newly-relied-upon reference (Destri) meant that the Applicant was already on notice. I just don't see what Destri's presence in Huang's chain of priority has to do with notice.

The Applicant noted in the Reply Brief the introduction of Destri in the Answer, and argued there that it was improper and that the Board should therefore ignore Destri. However, the correct procedure for Applicant to challenge a new ground not designated as such is to file a Petition under § 1.181. (True under the old appeal rules and under the new ones effective Jan. 2012, the difference being that now the Petition tolls the time period for filing a Reply Brief.)