PTAB Decision

Ex parte Catlin, Appeal 2007-3072 (February 3, 2009)

Background

The Supervising Patent Examiner filed a request for rehearing of a Board decision affirming-in-part and reversing-in-part an Examiner’s decision based on obviousness grounds. In reviewing the rehearing request, the Board vacated its prior decision, dismissed the request for rehearing, and instituted a new ground of rejection of all the claims for indefiniteness under 35 U.S.C. § 112, second paragraph.

The technology related to a method for implementing an on-line incentive system, reciting “providing, at a merchant’s website, means for a consumer to participate in an earning activity.” Noting that the specification describes generally that such earning activity can be accessing through the web site, and that incentive activities may generally include frequent flyer and “points”-based programs, the Board stated that such description “merely provides examples of the results of the operation of an unspecified algorithm . . . by which the consumer is able to participate in an earning activity.” The Board determined that the “specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the” claimed functions. See Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

Issue

Are means-plus-function claims describing a ‘general purpose computer’ indefinite if not supported by an algorithm in the specification?

Outcome

The claims are invalid as indefinite under 35 U.S.C. § 112, second paragraph.

Prosecution Takeaway

To avoid challenges to claim indefiniteness, functional claim elements to a general purpose computer must be adequately supported in the specification by sufficient structure, e.g., an algorithm.