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.
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.
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.
"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."
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.
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.