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. 

New Examination Guidelines for Definiteness and Functional Language

The PTO has released new Examination Guidelines for Definiteness under 112 Second and for "Computer Implemented Functional Claim Limitations." You can find the Guidelines here.

PharmaPatents blog has a summary of the guidelines here, along with some commentary. IPWatchdog has a summary here, along with a discussion of how they fit in with other Kappos initiatives.

BPAI rejects "mechanism adapted to move": no structure and thus indefinite (Ex parte Merdan)

Takeaway: The BPAI entered a new indefiniteness rejection for means-plus-function limitations in a mechanical case. The Board found that no structure was disclosed for performing the movement function of "a mechanism adapted to move at least one of the optical system and the securement device while maintaining the cutting spot on the wall of the tubular member." The specification merely stated that a shaft was moved, without describing any structure to accomplish the movement.  (Ex parte Merdan.)

Details:
Ex parte Merdan
Appeal 2010009279, Appl. No. 10/190,975, Tech. Center 1700
Decided August 31, 2010

The subject matter of the application was a system for manufacturing a stent, including a laser system 20 which cut out a pattern from a tube 12 mounted on a movable shaft 18. According to the Applicant, the inventive features included securing the tube in a vertical orientation, and a liquid flow 26, both of which assisted in removing debris during the cutting process.

The claims on appeal were rejected under § 103, but the Board did not reach the merits of the rejection. Instead, the Board raised a new ground of rejection under § 112, ¶ 2, finding that the "mechanism" limitation in each independent claim was indefinite.

The two limitations are issue were:

• a mechanism adapted to move at least one of the optical system and the securement device while maintaining the cutting spot on the wall of the tubular member thereby moving the cutting spot over at least a portion of the wall of the tubular member in both vertical and circumferential directions;
• a mechanism adapted to move at least one of the laser apparatus and the securement device whereby the laser system removes material from at least a portion of the wall of the tubular member in both vertical and circumferential directions; 

The Board first held that both claims were indefinite under the precedential opinion Ex parte Miyazaki:

When an applicant has not given notice to the public [by using the phrase 'means for'] that his or her purely functional claim element is to be limited to the application of § 112,  sixth paragraph, a first USPTO concern is that the claim is indefinite.

The Board then used an alternative rationale to reject under In re Donaldson:

Moreover, even assuming 35 U.S.C. § 112, ¶ 6 applies, in consulting the Specification, we find no structure corresponding to the function of moving the optical system and/or the securement device as claimed. For this additional reason, the claims are indefinite under 35 U.S.C. § 112, ¶ 2. See In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc)

In the Appeal Brief, the Applicant pointed to a section of the spec as disclosing the structure. However, the Board found the spec merely stated the function ("the tube 12 is moved via the predetermined movement pattern of shaft 18"), and did not "identify the specific mechanisms or structures that impart the disclosed movements."

My two cents: A straightforward application of § 112, ¶ 6. No structure = indefinite. I see a lot of means-plus-function claims shot down in computer and electronics applications, but this was one of the few times I've seen that happen in a mechanical case.

The interesting aspect to me is how to draft a claim that avoids this rejection. The claim recited "an optical system including a laser, said optical system adapted to form a cutting spot on a wall of a tubular member ... and to modulate the laser energy according to a predetermined pattern." The second independent claim included a whereby clause that captured the important aspect of vertical removal: "whereby the laser system removes material from at least a portion of the wall of the tubular member in both vertical and circumferential directions."

Could you just tack the whereby clause onto the end of the claim, to capture the inventive vertical removal aspect while avoiding explicitly claiming the movement?

What about a method claim with the step "moving the optical system or the securement device"? Could you get away with that, or would it be vulnerable to an § 112, 1st rejection? I think you have a better chance of overcoming enablement because you can rely on the knowledge of a POSITA. Perhaps you could successfully argue that even though you didn't disclose a computer-controlled motor for moving the shaft in a pattern, a POSITA would know how to do that.

One more interesting tidbit about this case. This is the second appeal for this case, and the Applicant still doesn't have a Board decision on the prior art rejections. In the first appeal, the merits weren't reached because the Board rejected the hybrid method/system claims as indefinite under IPXL Holdings v. Amazon.com. On return from the first appeal, the Applicant amended the claims to clearly claim a system rather than a method, by reciting the "optical system," the "securement device" and the "mechanism adapted to move." The Applicant appealed at the Examiner's prior art rejections at the first opportunity. But the § 112, ¶ 6 rejection raised by the Board once again prevented a decision on the prior art rejection.

Ex parte Rodriguez (precedential): 112 is the new 101

Ex parte Rodriguez (precedential)
Decided October 1, 2009
(Appeal 2008-000693, Appl. No. 10/132,492, Tech. Center 2100)

This case involved four different sets of claims: apparatus claims; means-plus-function claims; method claims; and computer-readable medium claims. The technology related to verification of hardware components, using software running on a computer.

All claims were rejected by the Examiner under §102(b). Without reaching the merits of the Examiner's rejection, the Board entered new grounds of rejection for each of the claim sets:

• means-plus-function claims: rejected under §112 Second, following the rationale set out in Aristocrat v. Inter. Game Tech.
• apparatus claims: found to be means-plus-function claims and also rejected under §112 Second, following Aristocrat.
• apparatus claims: alternatively, if not considered to be means-plus-function, rejected under §112 First, enablement.
• method claims and computer-readable medium claims: rejected under §112 First, enablement.

A rejection under §101 was (inexplicably) missing.

If the Patent Office issues guidelines based on this decision, I predict Ex parte Rodriguez will have a big impact on practitioners that prosecute "software" applications. Method claims have already hit a roadblock with 101/Bilski, but Bilski itself doesn't suggest its application to other claim types. This decision, on the other hand, applies to method claims – possibly even those that pass the Bilski test – and most of the other claim types that are used cover software implementations. The only claim type that isn't directly implicated by this decision appears to be a processor-plus-memory claim.

Although the four new rejections were each slightly different, all are based on the same underlying facts: the claims contained very little structure and instead relied almost completely on functional language; and the specification contained very little detail about how to implement the functions. Therefore, the patent applications that will be most affected by Ex parte Rodriguez are ones that fit this fact pattern.

In this post, I'll discuss how those facts played out in Ex parte Rodriguez in the rejections of the means-plus-function and apparatus claims. In a future post, I'll discuss the rejection of the method and computer-readable-medium claims.

Means-plus-function claims: The specification stated that the various claimed functions could be implemented by a "conventional general purpose digital computer," and also said "appropriate software coding can readily be prepared by skilled software programing." However, the Board found that no specific description of how to generate a system configuration file was provided.

Whenever a general purpose computer is disclosed as the means for implementing a function, an algorithm to implement that function must also be disclosed. This rule – essentially saying that an algorithm serves as the "structure" – was recently set out by the Federal Circuit in Aristocrat, although Aristocrat followed precedent set way back in 1999 by WMS Gaming. Because the spec disclosed no such algorithm, the Board found the means-plus-function claims to be indefinite.

Apparatus claims treated as means-plus-function: An example limitation in the independent apparatus claim is: "a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system." Even though the magic word "means" was not present, this limitation (as well as each of the others) was still subject to §112 ¶6 because the Board found no evidence that the terms in question (e.g. "system configuration generator") connoted structure. Having determined that the apparatus claims were really means-plus-function in disguise, the Board then repeated the Aristocrat analysis set out above to find the claims indefinite.

Apparatus claims treated as NON-means-plus-function: If the apparatus claims did not fall under §112 ¶6, the Board found that these claims were invalid for lack of enablement "because the claim elements are purely functional (i.e., there is no particular structure to support the function being performed)." (Decision, p. 28.) To hold otherwise would allow the claim to "encompass any and all structures for achieving that result, including those which were not what the applicant had invented." (Decision, p. 30.) "Congress permitted [through §112 ¶ 6] the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof." (Decision, pp. 30-31, quoting Greenberg v. Ethicon, Fed. Cir. 1996.)

The Board found that the "system builder" limitation covered any and all structures that performed the recited function. Since "any and all structures" included ones not described in the specification, the Board then entered an enablement rejection for the apparatus claims.

Method and computer-readable-medium claims: I'll discuss these in a future post.