Wednesday, February 5, 2014

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.


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. 

34 comments:

  1. What are you talking about? What specific language in the MPEP creates an exception to the Federal Circuit's law on interpreting M+F claims?

    1. the CFR trumps the MPEP, and the Code trumps the CFR

    2. the PTO has no authority to issue substantive interpretations of 101, 102, 103, and 112, etc.

    3. I've never heard of an "exception" at the PTO to M+F case law before

    4. If I recall correctly, the MPEP (section 2181 I believe) did say, at one point, that Examiners should apply 112:6 if the claim uses "means." But the PTO eliminated that rule in a Fed.Reg. notice (updated 112 guidelines, I think) and said the MPEP would be updated accordingly. Beyond that, I don't know what you're talking about.

    ReplyDelete
  2. Anonymous, I think you did not read the post carefully, and as a result you seem to have misunderstood what the exception is. The "exception" is not to means plus function caselaw as you suggest in point 3, but to "broadest reasonable interpretation" caselaw, as it is applied to claims that may encompass all-software embodiments.

    Regarding point 1, your analysis is interesting, but doesn't seem relevant to the post. There's no contradiction between the Code of Federal Regulations, MPEP or U.S. Code in the situation raised in the post, rather the provisions of the CFR and MPEP are applied differently by different panels. And the U.S. Code itself is silent regarding whether to interpret means-plus-function limitations to include software embodiments.
    Regarding point 2, again it's an interesting idea, but does not seem relevant to the post. If you mean that the PTO does not have the authority to issue interpretations of case-law that must be followed by the U.S. Courts, you are right. But the Code of Federal Regulations is followed by the PTAB, and of course the MPEP is often the Examiner's source for how to apply the U.S. Code.
    Regarding point 3, just apply the ordinary meaning of the term to the provision in the post and see if you think it fits.
    Regarding point 4, an actual citation to the Federal Register would be helpful so the rest of us can know what you are talking about. As it is presently written, you appear to be stating that Examiners should no longer apply 35 USC 112, sixth paragraph when a claim uses "means." ("But the PTO eliminated that rule in a Fed. Reg. notice...") Do you mean only in some situations, only in the situation raised in the post, or what?

    ReplyDelete
  3. 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.
    Software alone is ENTIRELY INCAPABLE of performing the recited function. Only as part of hardware can software perform the recited function. However, the PTAB has a penchant for not letting facts and common sense get in the way of affirming a rejection.

    ReplyDelete
    Replies
    1. "Software alone is ENTIRELY INCAPABLE of performing the recited function."

      Then they should have recited that the software claimed needed to be capable of performing the recited function rather than simply being for that function.

      Delete
  4. Adam, answer the question: what SPECIFIC LANGUAGE in the MPEP are you relying on to support your alleged exception? We can't have a meaningful discussion because you are evading this question, and relying on a phantom exception that nobody else can find.

    You say: " The 'exception' is not to means plus function caselaw as you suggest in point 3, but to 'broadest reasonable interpretation' caselaw, as it is applied to claims that may encompass all-software embodiments." What are you smoking? Your entire post is about M+F claims. The post cited MPEP 2181 (about 112:6), and your first sentence references "the interpretation of means-plus-function claims." Clearly, you are talking about the interpretation of M+F claims.

    Re point 1: it is relevant because you allege that the MPEP creates an exception to the interpretation of M+F and/or software claims. But the PTO does not have the power, through the MPEP, to create exceptions for claim constructions. Claim constructions under 112 is governed by the statute and Federal Circuit case law. The MPEP can provide guidance on how to apply that case law, but cannot create exceptions.

    Re: point 2, I'm referring to the PTO's inability to issue substantive rules, a restriction about which you do not seem aware. Putting aside the new grant of powers in post-grant, the PTO has very limited powers under 35 USC 2, and cannot issue substantive rules interpreting 102, 103, 112, etc.

    3. I don't know what "provision" you are talking about. Quote the exact language from the MPEP, and then we can begin to understand what you are talking about.

    4. I'm referring to this sentence, "This guideline modifies the 3-prong analysis in MPEP § 2181, which will be revised in due course." in this:

    http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf

    That is my best guess about what you are talking about. If you're not talking about this, then I have no idea what exception you are talking about. Please quote the exact language from the MPEP that you are relying on.

    ReplyDelete
  5. Anonymous at 4:19PM - You're right on both counts. I have never understood how claims reciting functions can be interpreted as software per se, since software (1) must always be stored in hardware to exist, and (2) must be implemented by hardware to function. Software per se is a fiction. Software is, in its essence, hardware having particular charges or states representing data.

    Anonymous at 6:20PM - I'm always surprised by how worked-up some commenters are on patent-related blogs. I expect it on political blogs, for example, but would hope for more thoughtful and considered commentary in such a specialized field as patent law. I debated whether to answer your questions substantively, since you seem dead-set on being belligerent, but I'll give it one shot since there's a chance you are sincere.

    The language in both the Federal Register and the MPEP is cited in the post itself and bolded, and the MPEP section is also hyperlinked. I'm not sure how it could be clearer (or less evasive!). I consider it to be an exception, because in most cases, the Examiners are directed to interpret claims encompassing hardware and software embodiments as covering non-statutory subject matter, but in the case of means-plus-function language, the Examiners are directed to interpret the limitation as being directed to hardware and not software only. This is also explained in the post. It seems unlikely that you did not know what I was talking about if you took the time to read anything more than the title of the post. If you read the entire post and still don't know what I'm talking about, we really cannot have a meaningful conversation.

    ReplyDelete
  6. Adam - my apologies. I hadn't read as carefully as I should have. Both the original post and the cited MPEP are lengthy by blog/twitter/youtube standards.

    Now I see what you mean. As I stated above, the MPEP cannot overrule the CFR or the USCode. So the Board would be perfectly proper ignoring this MPEP section, to the extent that it suggests anything different than the broader law does. In fact, I've heard (and believe) that it's good practice to avoid citing the MPEP on appeal.

    The wrinkle here is that, under settled CAFC law (cited in MPEP 2181), the corresponding structure for a software MF claim is the "algorithm" - not hardware. And an algorithm can be (arguably) pure software. So I don't see this MPEP citation as providing any solid argument against the more general rule of claim interpretation.

    Nevertheless, you're right that it's worth pointing out, and interesting in its own right. I am just cautioning people not to rely too heavily on this, or any other MPEP section, on appeal - a temptation that a lot of prosecutors with heavy dockets (like myself) often feel.

    ReplyDelete
    Replies
    1. Adam,

      Thank you for your patience with this person. I shudder to think what their legal practice is like. They should probably stick to trolling PatentlyO, where this behavior seems to be widespread.

      I don't agree with their statement that "under settled CAFC law (cited in MPEP 2181), the corresponding structure for a software MF claim is the 'algorithm' - not hardware." Straight from the horse's mouth (the PTAB in Ex Parte Lakkala): "For a computer-implemented claim limitation interpreted under § 112, sixth paragraph, the corresponding structure must include the algorithm needed to transform the general purpose computer or processor disclosed in the specification into the special purpose computer programmed to perform the disclosed algorithm." So the algorithm is necessary, but is not divorced from the hardware (general purpose computer or processor) that executes the algorithm.

      I definitely agree with Adam that software can perform cited functions, and there's no principled reason for the above. As you and Karen are well aware, our caselaw has a very strained relationship with software per se. It always must be clothed in some artifice, like a processor+memory, or a (non-transitory) computer-readable medium.

      Delete
    2. a (non-transitory) computer-readable medium
      BTW, what is meant by "non-transitory"? The USPTO likes us to put that language in certain claims, but I think there is some serious definiteness issues regardless that phrase.

      Delete
    3. Anonymous at 1:50PM - Imagine the chaos that would ensue if the Federal Circuit were to hold that the term "non-transitory" was indefinite.

      One interesting note about the term "non-transitory" is that very few specifications include the exact words "non-transitory," but Examiners, who are typically very strict about amending claims with the exact language from the specification, don't raise "new matter" rejections when claims are amended to include the "non-transitory" language.

      Delete
  7. One last point: to see what I mean, my reference earlier to "the 3-prong analysis in MPEP § 2181" (see my previous comment) provides a clear example of how the MPEP cannot trump the overarching law, and will be revised/corrected if it tries to. This example comes from the same context of MPEP 2181 and M+F claims. It sounds like whoever drafted the earlier version of MPEP 2181 got a little carried away.

    ReplyDelete
  8. Anonymous 9:22,
    Thanks for taking another look at the post and for your comments. I of course agree that citing the MPEP or Federal Register may not be compelling arguments on appeal, although if a particular panel is persuadable, the citation to the Federal Register may tip the scales in an appellant's favor. But in a case where you have these means-plus-function claims that can encompass software-only embodiments, it is definitely preferable to raise this argument with the Examiner rather than the Appeal Board, since the Examiner is more likely than the Appeal Board to be persuaded by the MPEP.

    ReplyDelete
  9. Adam, two more points occur to me:

    1. as an academic matter, persuading the Examiner to allow a patent due to an MPEP rule that's an "exception" to the law, will put a cloud over the patent and raise concerns about invalidity.

    2. I'm not aware of any "pure software is not patentable" rule. I sometimes see Examiners say this, but I am not aware of solid case law supporting it. Look at RCT case: the claim essentially defines a "mask" that is a pure software abstraction without hardware. That claim was held valid because the masking process could not be practically performed in the human mind. Until we get further guidance in CLS Bank, I think that's one of the better tests to use (can it be performed practically in the human mind) than the "pure software" test.

    ReplyDelete
    Replies
    1. "2. I'm not aware of any "pure software is not patentable" rule."

      "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T, 550 U.S. 437, 449 (2007)."

      Now you can't say that anymore.

      Delete
    2. What is "pure software" versus what is "abstract software code"? Are they the same? What are they?

      BTW ... the case you cited talked about a component § 271(f). It didn't involve 35 USC 101. Is "pure software" a machine component or a process? Methinks your case law isn't as rock solid as you think.

      Delete
    3. "What is 'pure software' versus what is 'abstract software code'? Are they the same? What are they?"

      Too late to play dumb. You've already answered that: "a pure software abstraction without hardware."

      "It didn't involve 35 USC 101."

      If you're aware of SC 101 jurisprudence, perhaps the words "abstract" and "an idea without physical embodiment" would tip you off as to what the SC thinks about Sec. 101 eligibility of "a pure software abstraction without hardware." But then again, there may be an uncountable number of things you're not aware of.

      Delete
    4. You've already answered that
      Different poster ... so no, I didn't answer it.

      Also, you didn't address the issue of whether or not "pure software" is a machine component or a process.

      Delete
    5. "Different poster ... so no, I didn't answer it"

      My, but you are slick. But you are aware, of course, that "you" can be plural. Or are you just playing dumb?

      "Also, you didn't address the issue of whether or not 'pure software' is a machine component or a process."

      I did, and it is not. What part of "idea without physical embodiment" do you not understand?
      .

      Delete
    6. it is not
      Not a machine component or not a process? Using "it" in legal writing is lazy and would definitely receive a red mark in my legal writing class.

      What part of "idea without physical embodiment" do you not understand?
      SCOTUS was referring to "abstract software code." I was addressing the issue of what is "pure software."

      Did you notice that SCOTUS apparently felt the need to put "abstract" before "software code"? Why is that? Perhaps they did so to distinguish it over other non-abstract embodiments.

      Delete
    7. "Also, you didn't address the issue of whether or not 'pure software' is a machine component or a process."

      Most human beings would know that the subject of the made-up "issue" is "pure software." I don't know that a legal writing class could fix that. It -- PURE SOFTWARE -- is not a machine component or a process. But you've explained what part of "idea without physical embodiment" you do not understand --- all of it.

      "Did you notice that SCOTUS apparently felt the need to put "abstract" before "software code"? Why is that?"

      So what is the difference between, as you put it, "pure software abstraction" and "abstract software code?"

      Delete
    8. So what is the difference between, as you put it, "pure software abstraction" and "abstract software code?"
      I asked that question 3 days ago. Where were you? Oh yeah, you were trying to prove how much of a "manly man" you were with your insults.

      Delete
    9. "I asked that question 3 days ago."

      Maybe if you'd asked it here we'd have an answer by now.

      Delete
    10. Maybe if you'd asked it here we'd have an answer by now.

      Readying comprehension a problem of yours?

      This is what I wrote (ON THIS BLOG) on February 17, 2014 at 1:47 PM:
      What is "pure software" versus what is "abstract software code"? Are they the same? What are they?

      Delete
    11. Reading comprehension? Heh, heh. The only way "pure software" could be identical to "pure software abstraction" and "abstract software code" is if they are all abstractions. You've accidentally established that pure software is an abstraction -- an idea without physical embodiment, non-statutory. Thanks. But it shouldn't have taken seven days.

      Delete
    12. You've accidentally established that pure software is an abstraction
      Readying comprehension really is a problem of yours. I have not accidentally or intentionally established that "pure software" is an abstraction (or not). I've asked a question as to whether or not they are the same.

      Of course, you could attempt to support your assertion that I "accidentally established" that they were the same with an explanation. However, I suspect you'll do what you've done all along -- avoid the question -- very examiner-like.

      Delete
    13. "I have not accidentally or intentionally established that "pure software" is an abstraction (or not)."

      Some may blame the educational system. I do.

      (1) What is "pure software" versus what is "abstract software code"?

      (2) So what is the difference between, as you put it, "pure software abstraction" and "abstract software code?"

      "I asked that question 3 days ago."

      The only way question 1 is identical to question 2 is if "pure software" is identical to "pure software abstraction" or "abstract software code." Take your pick. Either way, without being aware of it, you've established that the "pure software" you're talking about is an abstraction.

      Simple freshman-year propositional logic. A legal writing class cannot fix your problem.

      Delete
    14. A legal writing class cannot fix your problem.
      Ahh ... I see you are reading words into my statement. I did write "I asked that [identical] question 3 days ago." My statement was that "I asked [a similar/comparable/related] question 3 days ago." Therefore, your "propositional logic" is flawed by making an unsupported assumption.

      At best, you can argue that my question was a little fuzzy and open to interpretation. As such, I did not "establish" that "pure software" is an abstraction.

      I suspect you'll do what you've done all along -- avoid the question -- very examiner-like.
      Nailed it!!!

      Delete
    15. "At best, you can argue that my question was a little fuzzy and open to interpretation."

      I apologize for not misquoting your question, or your statement, or whatever you wish to call it. Good luck with that legal writing thing.

      "I suspect you'll do what you've done all along -- avoid the question -- very examiner-like."

      If avoiding a question is eliciting an answer, then ok. Good luck with that legal writing thing.

      Delete
  10. What is Karen's new email / contact? Is she no longer at TKHR?

    ReplyDelete
    Replies
    1. I'm at Cantor Colburn now. Looks like when I moved firms last year I updated some of the Blogger contact fields, but not all. Now that you've brought this to my attention, I updated my Blogger profile to show my email address and bio page at Cantor Colburn.

      Delete
  11. This can be easily explained. Walker was decided by a rookie panel of APJs. Hillis was decided by at least two APJs that have been at the Board for more than five years; likely around 10 years. Experience counts!

    ReplyDelete
  12. "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"

    Now claim construction is a matter of RULE? Silly me, I thought it was a matter of law.

    ReplyDelete
  13. "This is the Patent Trial and Appeal Board; which has its decaying houses and its blighted lands in every shire; which has its worn-out lunatic in every churchyard; which has its ruined suitor, with his slipshod heels and threadbare dress, borrowing and begging through the rounds of every man's acquaintance; which gives to monied might;the means abundantly of wearying out the right; which so exhausts finances, patience, courage, hope; so overthrows the brain and breaks the heart; that there is not an honorable man among its practitioners who does not give—who does not often give—the warning, "Suffer any wrong that can be done you, rather than come here!""

    With apologies to Charles Dickens

    ReplyDelete
  14. Thanks for sharing, nice post! Post really provice useful information!

    Giaonhan247 chuyên dịch vụ vận chuyển hàng đi mỹ cũng như dịch vụ ship hàng mỹ từ dịch vụ nhận mua hộ hàng mỹ từ trang ebay vn cùng với dịch vụ mua hàng amazon về VN uy tín, giá rẻ.

    ReplyDelete