Ex parte Gutta, Appeal 2008-4366 (August 10, 2009)
On appeal of 35 U.S.C § 101 rejections for method, system and article of manufacture claims, the Board entered a new ground of rejection under 35 U.S.C. § 112, second paragraph as to sole means-plus-function claim. The claim related to a system with a “means for computing a variance of the symbolic values,” and a “means for selecting an item that has a symbolic value that minimizes the variance.” Noting that neither the Examiner nor the appellants had indicated whether the claim invoked § 112, ¶6, the Board determined that the claim clearly used functional language and as such, required adequate supporting structure, material, or acts for performing the claim function in the specification.
The Board first reviewed Federal Circuit precedent which held that merely disclosing a general purpose computer and/or “software” without further detail such as an algorithm, is insufficient structure and renders a claim indefinite. See Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008); Finisar Corp. v. The DirectTV Group, 523 F.3d 1323, 1340 (Fed. Cir. 2008). Reviewing the specification, the Board determined that although the disclosure described “a formula for calculating a variance of symbolic values . . . there are few details of the algorithm or process for selecting the item that minimizes the variance.”
The Board also addressed subject matter eligibility of the remaining claims using a framework now superseded by recent Supreme Court precedent. See 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014).
Issue: Are means-plus-function claims describing a ‘general purpose computer’ indefinite if not supported by a fully disclosed algorithm in the specification?
Outcome: The Board held that the claim was indefinite under 35 U.S.C. § 112, second paragraph for failure to provide sufficient supporting structure to the means-plus-function claim.
Prosecution Takeaway: Applicants must use caution when employing functional claiming identify the supporting structure in the specification, such as an algorithm, and further must do so with enough detail to avoid running afoul of § 112, second paragraph. The Board, unfortunately, failed to articulate how much detail of the algorithm is necessary to support the claim beyond its statement that “few details of the algorithm” was not enough.