“Black Boxes” in Claims are Indefinite, says BPAI
Ex parte Rodriguez, (Appeal 2008-000693)
In its Precedential Opinion penned by Allen MacDonald last fall, the Board of Patent Appeals and Interferences weighed in on the use of means-plus-function claims where the specification only discloses a general purpose computer. In large part, this opinion just applies the Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) and Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009) cases, which essentially reiterate that when using a means-plus-function format to claim a programmed computer, the specification must disclose the corresponding structure in the form or a particular algorithm in order to satisfy §112, ¶6.
However, after reading the opinion, I noticed what I thought an interesting §112, ¶1 rejection for lack of enablement, in the alternative. Essentially, the Board had found that §112, ¶6 applied to certain claim terms (“system configuration generator,” “system builder,” and “simulation verification environment”) but that there was no definite structure (i.e., algorithm) for these elements, and therefore they were indefinite under §112, ¶2. Yet, the board went on to say that even “if § 112, sixth paragraph does not apply to these claim limitations, then we make an alternative rejection of [the] claims . . . for lack of enablement under 5 112, first paragraph because the claim elements are purely functional.”
I found the following discussion of what constituted “purely functional” claim language a rather useful claim drafting refresher, and it’s worth a read of the entire opinion if you have the time:
Scope of Enablement
Section 1 12 requires that the patent specification enable “those skilled in the art to make and use the full scope of the claimed invention without ‘undue experimentation’ ” in order to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts.
. . .
Undue Experimentation - Wands Factors
Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations…
The Wands factors include:
(1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented,
(3) the presence or absence of working examples,
(4) the nature of the invention,
(5) the state of the prior art,
(6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art, and
(8) the breadth of the claims.
. . .
Functional Claiming versus 35 U.S. C. § 112, sixth paragraph
35 U.S.C. 5 112, sixth paragraph, when enacted, was a statutory response to the Supreme Court’s decision in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946). In Halliburton, the Supreme Court held invalid an apparatus claim on the ground that it used “means-plus-function” term which was purely functional. Such a claim was improper because the means term with a stated function merely described a particular end result, did not set forth any specific structure, and would encompass any and all structures for achieving that result, including those which were not what the applicant had invented.
. . .
Functional Language In and Of Itself
We recognize that functional language does not, in and of itself, render a claim improper. . . [E]ven though the claim at issue recited the desired property of the composition in functional terms, the claim nonetheless tied that functional language to a definite structure. . . [T]he scope of the functional claim language of claim 1 is so broad and sweeping that it includes all structures or means that can perform the function. It is not limited to any corresponding structure, material, or act disclosed in the specification and equivalents thereof.
. . .
§ 112(1) Rejection Analysis
In the present case, as discussed supra, we are presuming that despite the lack of structure in the claims, it is not proper to perform claim construction under 112, ¶ 6 paragraph. That is, the “system configuration generator configured to generate,” “system builder configured to (i) build . . . and (ii) generate,” and “simulation verification environment configured to verify” elements of claim 1 do not require claim interpretation under 5 112, sixth paragraph.10 As such, the result would be that these three elements are each a functional recitation in that there is no structure presented in the claim element itself, and we are not required to import structure from the Specification into the claim under 35 U.S.C. 5 112, sixth paragraph. These claim elements are purely functional. . . [I]n this case and those like it, the purported “structures” in the claims are essentially black boxes not connoting any structure to the skilled artisan, and are merely circularly defined by their desired functions.
Obviously the Board found that these “black box” structures were not enabled and were therefore properly rejected under § 112, ¶ 1 under this alternative theory. Again, the opinion is worth a read, if for no other reason to see the Board’s discussion of whether a “system builder” is a term that “has achieved recognition as a noun denoting structure.” Answer Hint: I wouldn’t try using it in any claim that you’re drafting.