PTAB: Nuijten Doesn't Apply to Method Claims

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Takeaway: The 35 U.S.C. § 101 prohibition against claims covering transitory signals per se, as articulated by the Federal Circuit in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), does not apply to method claims, since methods are processes and are therefore among the expressly permitted categories of statutory subject matter. Ex parte Kosuru, No. 2014-005593 (P.T.A.B. May 19, 2016).

Details:
Ex parte Kosuru
Appeal 2014-005593; Appl. No. 13/406,478; Tech. Center 2100
Decided: May 19, 2016

In the application underlying this appeal decision, all of the independent claims were method claims, and each recited an "input file being stored on a computer readable storage medium." Initially, the word "storage" was absent from the claims, and the examiner rejected all of the claims as directed to non-statutory subject matter under § 101, citing to In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating signal . . . is not a 'process, machine, manufacture, or composition of matter.' Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.") The claims were amended to specify that the "medium" was a "storage medium," as above, but the examiner maintained the rejection on final.

The Federal Circuit held in Nuijten that a propagating signal itself, such as a radio broadcast, an electrical signal through a wire, or a light pulse through a fiber-optic cable, is not patentable subject matter. According to then-director David Kappos's January 26, 2010 memo to the examining corps, entitled "Subject Matter Eligibility of Computer Readable Media," the PTO interpreted the Federal Circuit's decision in Nuijten to mean that "[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." The memo references the Nuijten opinion as well as the August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."

In their briefs in Kosuru, the appellants conceded that their claims were "drawn to" a computer-readable storage medium, but emphasized that the use of the word "storage" meant that the claims could not read on transitory signals and thus were subject-matter eligible. In support, the appellants referred to Ex parte Hu, No. 2010-000151 (B.P.A.I. Feb. 9, 2012), which held that "[w]hile a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data" (emphasis added).

The examiner's only response was an allegation that the specification did not refer to "storage" media—a weak response given that the claims clearly recited "storage" and no rejection was made on § 112 grounds for lack of written description or enablement. The appellants' reply brief noted several specification paragraphs that mentioned algorithms "stored on" computer-readable media or on "a disk," but even absent this support, PTO policy evidently tolerates amendment language limiting claims to non-transitory embodiments even when such language is not explicitly supported, so long as non-transitory interpretations are not ruled out by the specification. See the above-mentioned 2010 memo ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments . . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent . . .").

The PTAB resolved the appeal of the § 101 rejection on much broader grounds than the examiner and appellants had argued: "Unlike the claims at issue in In re Nuijten, each of the pending claims here recites a method—a series of acts or steps—and thus falls under the statutory category of 'process.'" Indeed, the examiner (and the Board) had only to read the opinion cited in support of the rejection to realize that, in Nuijten, disputed independent claim 14 was directed to "[a] signal," while claims 1-10, directed to "[a] method," and 11-13, "[a]n arrangement for embedding supplemental data in a signal," were not appealed because the PTO found them statutory without any fuss.

My two cents: Nuijten did not expressly hold that process claims cannot be rejected as "covering" transitory signals, because that issue was not before the Nuijten court. This case may provide useful support for countering Nuijten-type rejections of method claims.

Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based. Transitory signal subject-matter analysis is a narrow area of subject-matter eligibility analysis. Like the words "directed to" used in broader subject-matter eligibility jurisprudence, including abstract-idea jurisprudence (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014); In re Benson, 441 F.2d 682, 684 (C.C.P.A. 1971)), the word "covers" used in the Kappos memo ("[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected . . .") can be interpreted overly broadly. When "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes. The examiner and appellants got lost on a wild goose chase over whether the specification taught "storage" media, whereas the real question was the propriety of the examiner's initial decision as to whether the claims could be interpreted as attempting to capture, among whatever else, transitory signals per se.

Another potentially winning argument in this case might have been to argue that the claimed "input file" cannot reasonably be interpreted as encompassing transitory signals, since, even under broad interpretations, "file" has a meaning of a record of greater-than-transitory permanence such that it can be stored and retrieved at arbitrary times. After this PTAB decision, such an argument is superfluous in view of the fact that an Applicant can simply point out that the claims are couched as methods.

Snapshot of 101 Patent Eligible Subject Matter Decisions in May 2014

Posted by: Adam Ellsworth

As the PTAB recently admitted, "the case law regarding 101 continues to evolve" (Ex parte Fickle, Appeal No. 2011-007587).

I thought it might be helpful to look at cases decided by the PTAB in the last month to see if there are any patterns in how the Board is deciding issues of patent-eligible subject matter under 35 U.S.C. 101. It turns out that the case law regarding computer-readable media has pretty-well settled at the PTAB, but it is harder to define clear patterns in decisions regarding the patent-eligibility of other types of methods and systems.

The Rejection of Computer-Readable Media

I considered 32 cases that addressed issues of patent-eligible subject matter under 35 U.S.C. 101. The majority of these cases (22 cases) involved computer-readable media. The takeaway from all of these cases is that in light of Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013 (precedential), do not expect to prevail at the PTAB by arguing that a "computer-readable medium," or even a "computer-readable storage medium," does not include transitory signals. The decisions were unanimous.  If a claim directed to a computer-readable medium omits the words "non-transitory" and lacks other structural limitations, then the computer-readable medium encompasses transitory signals and the claim is not patent-eligible.

Among the cases directed to computer-readable media, Ex parte Makkinejad (Appeal 2011-012801; Decided May 15, 2014) is interesting, because it was not directed to just a computer-readable medium, but rather to a computer-readable storage medium. The result, however, was the same.
Claim 19 of the application is directed to a "computer readable storage medium" and the claim was rejected by the Examiner under 35 U.S.C. 101 as being directed to patent-ineligible subject matter, since, the Examiner argued, the claim encompassed transitory signals. The Appellant argued that "the term 'storage media' would not include any embodiments in which the medium is merely a propagation medium, as opposed to a medium that actually stores data." The Board disagreed and cited as an example, "circulating memory," which uses a delay line to store information in the form of a pattern of pulses. (I'm not convinced by the Board's example, since circulating memory is in itself a physical structure, and the "pattern of pulses" cannot exist without the delay line, sensors, and amplifiers described by the Board. But the Board sustained the rejection of claim 19 under 35 U.S.C. 101.) 

The Rejections of Other Types of Claims (Not Computer-Readable-Media)

Among the non-computer-readable medium cases, two were cases involving biological processes, Ex parte Schatteman (Appeal No. 2011-013696) and Ex parte Cardwell (Appeal No. 2012-001657). In both of these cases, the Board reversed rejections under 35 U.S.C. 101. Among the remaining eight cases, the Board reversed 101 rejections in three cases and upheld 101 rejections in five cases.

101 Rejections Reversed

In the cases in which 101 rejections were reversed, the claims recited physical structures.

Processor and Memory: In Ex parte Cutlip, Appeal No. 2011-011658, rejected claim 7 recited a system comprising a processor and memory configured to provide instructions to the processor, and multiple "modules" to perform various functions. The modules are not explicitly tied to the processor and memory in the claim (such as by having the processor execute instructions of the module), but the specification described functions being performed by the processor. The Board reversed the Examiner's rejection of claim 7, stating that the Examiner had not established a prima facie case of non-statutory subject matter.

Data storage device: In Ex parte Bogues, Appeal No. 2011-013523, the Board held that a claim directed to a "data storage device" excludes transitory signals.

LAN and WAN: And in Ex parte Waites, Appeal No. 2012-000932, the Board held that claim elements "local-area network" and "wide-area network" include computers and associated devices, and therefore the claim did not encompass software per se.

101 Rejections Sustained

Computer program products: In the cases in which 101 rejections were sustained, one of the cases (Ex parte Arrasvuori, Appeal No. 2012-002671) included claims directed to computer program products, and the Board held that the claims could encompass software-only embodiments, and therefore were directed to patent-ineligible subject matter.

Hardware System: In one case, Ex parte Adam (Appeal No. 2012-002144), the claims recited a method in which requests are received, and messages published "by a publish/subscribe hardware system." However, the Board held that this recitation was insufficient to render the claims patent-eligible, stating that the "publish/subscribe hardware system" was merely a "nominal recitation of a computer."

Conclusion

While decisions directed to computer-readable media are consistent in stating that such media encompass transitory signals, other 101 decisions appear to vary on a case-by-case basis. Claims reciting physical structures that perform the steps of the claims are more likely to overcome 101 rejections at the PTAB, but a claim reciting a generic physical structure, such as a "hardware system," may not be patent-eligible.

PTAB affirms indefiniteness when CRM claim recites human action ("subscribe")

Takeaway: In an application for a computerized valuation platform, the Examiner rejected a computer-readable medium claim as indefinite. The Examiner took issue with the phrase "subscribing to the web-based valuation service," asserting that the word "subscribe" implied a human action, which conflicted with the claim's recital of a method performed by computer instructions. The Applicant argued that the action was done through computer instructions, at the request of a user. In support of this argument, the Applicant presented a dictionary definition ("to obtain a subscription") which did not mention performance by a human. The Board found that the definition offered by the Applicant did involve human activity, and thus affirmed the rejection. (Ex parte Allaway, PTAB 2014.)

Details:
Ex parte Allaway
Appeal 2012-006215; Appl. No. 11/009,547; Tech. Center 3600
Decided:  December 15, 2014

The application on appeal described a computerized valuation platform for intellectual property assets. During prosecution, the Applicant presented a system claim and a comupter-readable medium (CRM) claim. The CRM claim on appeal read:

     35. A computer-readable medium encoded with computer executable instructions .... , the instructions perform a method comprising:
      publishing at least one portable formula module defining one or more valuation formulas associated with an intellectual property asset at a network server that offers a web-based valuation service;
      subscribing to the web-based valuation service from a client device to access the at least one portable formula module;
      acquiring one or more values associated with variables of the one or more valuation formulas from a network database utilizing an automated acquisition that pulls information from the network database in response to a subscriber request;
      determining one or more valuation results associated with the intellectual property asset by executing the one or more valuation formulas using the acquired values; and
      displaying the determined one or more valuation results of the intellectual property asset valuation on an information presentation interface of the client device.
(Emphasis added.)

The Examiner rejected all claims under § 101 and § 103. The Examiner also rejected CRM claims 35 and 37 as indefinite. The Examiner explained that independent claim 35 was indefinite since "it is unclear how [a CRM] subscribes to a web-based valuation service (a human user activity)." (Emphasis added.) The Examiner used the same rationale for dependent claim 37, which recited "the client device further subscribing to ..."

During prosecution the Applicant argued against the indefiniteness rejection of independent claim 35. The Applicant first noted that the Examiner seemed "seem[ed] to rely on the notion that 'subscribing' is a human activity by its very definition." But according to the Applicant, the term was not given this meaning by the Applicant's disclosure, by the prior art, or by a POSITA (citing MPEP 2173.02). The Applicant also introduced a definition ("to obtain a subscription," from Dictionary.com), which did not mention performance by a human. Thus, the Applicant concluded that the indefiniteness rejection was improper.

The Applicant also addressed the indefiniteness rejection of dependent claim 37 by explaining that the " 'subscribing' is done at the behest of a user (presumably human) through a computer-readable medium encoded with computer-executable instructions." The Applicant asserted that the term was consistent with usage by a POSITA, and gave a specific example ("digital video recording device subscribing to a show at the behest of the user or having a server push content to a user's device or computer at the behest of a user.") The Applicant also referenced a portion of the Specification to support this interpretation.

In the next Office Action, the Examiner did not address the dictionary definition proffered by the Applicant. The Examiner did respond to the arguments for dependent claim 37 by commenting on the portion of the Specification mentioned by the Applicant. According to the Examiner, the Specification taught that "the subscribing is not directed to a system or set of computer instructions, but rather to actions of the individual user. This creates confusion as to when direct infringement or the claim limits occurs."

The Board affirmed the indefiniteness rejection. The Board first explained the requirements of a prima facie case of indefiniteness, as explained by the Federal Circuit's In re Packard decision:

When the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b) 

The Board noted that all of the meanings in the Applicant's proffered dictionary definition (from Dictionary.com) involved human activity, as did the Applicant's own examples offered in the Appeal Brief (TiVo and iTunes). The Board then found that the Examiner had presented a "well-grounded rejection" which the Applicant's arguments had not overcome, and thus ffirmed.

My two cents: The Board got this one wrong. When read in the context of the claim, publish and subscribe are not human actions. A POSITA would recognize these as computer actions that are part a well-known design pattern. (See this Wikipedia entry for "Publish-subscribe pattern".)

The CRM claim at issue recited "publishing" as well as "subscribing." Interestingly, the Examiner did not assert that "publish" was indefinite. Whatever led the Examiner to conclude that "publish" was
understood by a POSITA should also apply to "subscribe."

To make a much stronger case, the Applicant should have offered evidence of the technology-specific meaning of "subscribe." I did a cursory web search and found a Wikipedia entry as well as several technical articles discussing the Publish-Subscribe pattern (e.g., Oracle® Database Application Developer's Guide, Microsoft Patterns and Practices).

Board decisions involving Written Description rejections of computer readable medium claims

Once Examiners started issuing lots of § 101 rejections for computer applications, Applicants started to respond with amendments to turn non-CRM claim into CRM claims. If the spec didn't contain the magic words "computer-readable medium," the amendment often triggered a rejection under § 112 First, Written Description (the "possession" requirement).

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.
(Emphasis added, original citations omitted.)

My two cents: Every one of these rejections should have been reversed.

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.

Board reverses enablement rejection for "computer readable medium" since specification discloses an integrated circuit embodiment

Takeaway: The Examiner issued a § 112 First, Enablement rejection after the Applicant changed "medium" to "computer readable medium." The Applicant appealed and pointed to the specification 's disclosure of "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." The Applicant also argued that computer readable media are "so notoriously well known" that undue experimentation was not required. The Board reversed the rejection since specification did disclose "at least one embodiment of a medium as an integrated circuit coded to perform functions." (Ex parte Hofstee, PTAB 2011.)

Details:

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.

BPAI rejects dependent "computer usable medium" claims for failing to limit the independent claim

Takeaway: The BPAI entered two new grounds of rejection under § 112 for a set of dependent computer-usable medium claims. The Board rejected under § 112 Fourth Paragraph for failing to limit the independent claim, in that the preamble of independent claim 11 read "a computer-usable medium comprising a computer product" while the dependent claims read "the computer product of claim 11." The Board also rejected under § 112 Second Paragraph as being indefinite, finding that an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims." (Ex parte Buros, BPAI 2011.)

Details:

Ex parte Buros
Appeal 2009009738; Appl. No. 11/268,931; Tech. Center 2100
Decided  June 20, 2011

The application was directed to aggregation of data using policies. The Examiner finally rejected all independent claims as being anticipated and all dependent claims as being obvious. A set of "computer usable medium" claims were also rejected under § 101.

The computer-usable medium claims read as follows:

     11. A computer-usable medium comprising a computer program product and operable by a data processing system for managing data, the computer program product comprising:
     program code for identifying a policy for managing the data in a data storage system;
     program code for locating raw data in the data storage system for processing to form located data;
     program code for aggregating the located data based on the policy by summarizing the located data to form aggregated data such that the aggregated data is in a condensed form with respect to the located data by not including all of the located data in the aggregated data; and
     program code for storing the aggregated data in the data storage system.

     12. The computer program product of claim 11, wherein the program code for identifying a policy for managing the data in a data storage system comprises:
     program code for retrieving aggregation metadata from a server to identify the policy, wherein the aggregation metadata contains information used to aggregate the located data.

According to the Examiner, the medium claims were "drawn to a form of energy." The Examiner explained that energy is "not a series of steps or acts and thus is not a process," "is not physical nor an object and as such is not a machine or manufacture," and "is not a combination of substances and therefore is not a composition of matter."

The Board affirmed some of the prior art rejections and reversed others. The Board did not reach the § 101 rejection of the "computer usable medium" claims, instead entering a new ground of rejection of the dependent claims under § 112 2nd Paragraph and/or 4th Paragraph. 

According to the Board, each of dependent claims 12-15 and 17 "purports to provide further limitations with respect to the 'computer program product' of the independent claim." However, as written the dependent claims do not require the "computer usable medium" of the independent claim. Therefore, each dependent claim is broader in this respect than the independent claim, and thus fails under § 112 4th Paragraph to further limit the claim from which it depends.

As to the indefiniteness rejection, the Board found that the scope of dependent claims 12-15 and 17 is not readily ascertainable because "the dependent claims appear to be directed to only a portion of the invention as set forth in independent claim 11." Therefore, an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims."

My two cents: I've seen at least a dozen ways of formulating what is commonly referred to as a "computer readable medium" (CRM) claim. In some cases, like this one, it can be hard to figure out what exactly is being claimed. Presumably the "medium" is claimed because case law has recognized this as an article of manufacture. But why claim the "product"? And do you claim "code" (as was done here) or do you claim steps, or .... what?

As this case shows, formulating dependent claims for CRMs can be even trickier than for independents. I don't think Examiners are picky about this, so perhaps you don't see any reason to be concerned. But I think the Board was right, and you might as well write your dependent CRM claims properly. This sort of problem is trivial to fix – in fact, the Applicant here fixed it after the BPAI decision. So why wait for the Board – or worse yet, an accused infringer – to bring up a 112 Fourth problem?

One unusual aspect of this case was that no independent claims went up on appeal. The Applicant filed an After Final amendment which cancelled all independent claims and rewrote various dependents into independent form. However, the Examiner refused to enter the After Final amendment, noting in the Advisory Action that it "raised new issues that would require further consideration and/or search" ! So the Applicant withdrew the independent claims and a number of dependent claims in the Appeal Brief, and thus only dependent claims were considered by the Board.

Why did the Examiner refuse to enter the rewrite-dependent-into-independent-form amendments? Such an amendment doesn't change the scope of the claim, so logically, how could it require further consideration, much less a new search? The Applicant argued that the amendment put the case into "better form for appeal", which is a category of amendment that is allowed under § 1.116. Even if § 1.116 doesn't require the Examiner to enter it, it does sound like that one that MPEP 714.13 suggests should be entered, namely, it requires only cursory review:

Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection.

Finally, from a practical standpoint, how much work could it possible be for the Examiner to enter this? Is the Examiner just hoping to push the Applicants into an RCE?

One more observation. As noted above, when the Examiner refused to enter the After Final amendments, the Applicant reacted by "withdrawing" the independent claims in the Appeal Brief. The other option would be to file an After-Notice-of-Appeal amendment that rewrites the dependents into independent form. The rules for entry of amendments after appeal (§ 41.33) are different than the rules for entry After Final (§ 1.116), such that the Examiner is required to enter this same amendment after appeal.