BPAI Precedential Opinion on Rejecting Software Means Claims

Ex parte Catlinpic-32.jpg (BPAI 2009)(precedential) fd073072.pdf.

The first-time around, the BPAI found some of Catlin’s claims patentable. On rehearing (requested by the SPE), the BPAI reversed course – finding the means-plus-function claims indefinite under 35 USC § 112.

Catlin’s claim one reads as follows:

1. A method for implementing an on-line incentive system, said method comprising the steps of:
providing, at a merchant’s web site, means for a consumer to participate in an earning activity to earn value from a merchant; and
transferring value from said merchant to said consumer for participation in said earning activity, if said consumer qualifies, without re-directing said consumer away from said merchant’s web site, whereby said consumer’s focus of activity remains at said merchant’s web site.

The Patent Act allows a patentee to claim inventive elements using “means plus function” language. A means plus function term is construed to cover the corresponding structures as described in the specification as well as any equivalents. This rule of construction means that seemingly broadly written means limitations are often quite limited in practice — especially when the specification is not thoroughly drafted.

If no corresponding structure can be identified in the disclosure, then the claim will be found “invalid as indefinite.”

Here, the claim recites a “means for a consumer to participate in an earning activity to earn value from a merchant.” On rehearing, the BPAI could not find any corresponding structure in the specification. In particular, the Board was looking for an algorithm for performing the claimed function.

[W]e have thoroughly reviewed the Appellants’ Specification and have not been able to locate an adequate disclosure of structure, material, or acts corresponding to the functions of allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity.

Holding: Claims indefinite.

62 thoughts on “BPAI Precedential Opinion on Rejecting Software Means Claims

  1. Is there any case law regarding these if-statements or only-if type stuff? Maybe I’ll do a search for it this weekend…

  2. When I file an appeal brief I am required to present a summary section that basically includes the claims annotated with paragraph or page and line numbers and reference numerals. If I don’t present such a summary, I get accused of filing a non-compliant amendment.

    Did appellants not provide such a road map to support for their claimed means?

  3. “It really wouldn’t surprise me if there is a future case in which all of the claims in an issued patent are lost at trial because the patentee failed to file for reissue upon becoming aware, after the patent issued, of art relevant to only one of the issued claims”

    When did you first notice that you were going bald?

  4. @ broje “It really wouldn’t surprise me if there is a future case in which all of the claims in an issued patent are lost at trial because the patentee failed to file for reissue upon becoming aware, after the patent issued, of art relevant to only one of the issued claims.”

    Can you cure fraud through reissue????

  5. Of course I’m not sure, but it would surprise me tremendously to see such a case, unless there were a bunch of other, more smelly, facts involved. In my opinion, McKesson is almost entirely limited to its facts. But, that’s just my opinion.

  6. Are you sure?

    It really wouldn’t surprise me if there is a future case in which all of the claims in an issued patent are lost at trial because the patentee failed to file for reissue upon becoming aware, after the patent issued, of art relevant to only one of the issued claims. That is just the kind of punitive, retroactive injustice I would expect to see in a future installment of McKesson and Co.

  7. “Or am I wrong again?”

    You’re not wrong procedurally, but I personally don’t think McKesson requires you to keep pulling issued cases. If there’s truly material new art, then fine, but re-opening closed cases for a new opinion from an examiner shouldn’t be necessary, even under McKesson.

  8. Yeah, I see. This time I actually have to file the RCE so I can submit all the Office actions received in all of the parent cases. But next time around I should just be able to submit any newly received Office actions, and any new art cited therein, in an IDS with the payment of the issue fee. That puts my mind more at ease.

    I just hope I don’t get an Office action in the parent case after I pay the issue fee but before the case issues. Then I’d have to file a petition to withdraw the case from issue so I can file the RCE. Or am I wrong again?

  9. “Right now, I have an allowed case that I have to file an RCE on just so I can submit the Office action that was just received in the parent case.”

    If you “just received” the office action in the parent case, why can’t you sumbit it under 37 cfr 1.97(d)?

  10. Yes, the McKesson line of cases is berserk. I can’t believe we actually have to submit Office actions from cases in the same family.

    Right now, I have an allowed case that I have to file an RCE on just so I can submit the Office action that was just received in the parent case. Theoretically, it could go on forever. I get another notice of allowance in one case, and another office action in the other. Resubmit as RCE. Repeat.

    Now we have to get all the cases in a family allowed at the same time. Talk about unintended consequences.

  11. 6, you don’t understand that ids practices are governed by the retarded law on inequitable conduct. trust me, i don’t ever want to put 100 references in an ids either, but if this is another application in a family thereof, and i don’t cite everything…

    or if i have an overzealous inventor who does his own search and gives me all the results.. i have to cite everything, even if 99% of the references are not the least bit material.

    to do any less is just begging for a charge of ic.

  12. By the by, I have here my second app with 100+ NPL, 500+ overall refs in IDS’s over its course.

    IDSs. Get them under control.

  13. Couldn’t the claim have been rejected as lacking written description support, also or alternatively?

    A means claim (actually a means “element”) is still a good tool to round out scope. Under claim differentiation it could save the day from a prosecution history estoppel argument. And it at least makes for a more difficult case for the client’s competitor to design around or invalidate; an equivalent of an equivalent remains a murky area, notwithstanding most cases hold that a 112P6 and a doe equivalent are mere overlaps except for after-arising technology. In any event, in today’s world of narrow interpretation of means elements, a claim including a means element should only be drafted alongside a corresponding claim that includes the same element in non-means format.

  14. broje “If the claim says “PERFORMING C ONLY IF X=Y,” and the alleged infringers do not stop doing C when X is not equal to Y, they don’t infringe.”

    Q1: What if they stop doing C half the time when X does not equal Y? Do they infringe half the time, or none of the time?

    Q2: If you have to practice C to infringe the claim (and avoid the art), then why write the claim in algorithm format? Why not just claim the required actions? Why burden the claim with limitations that aren’t necessary?

    All this weirdness points to the issue alluded to by 6, above: what the heck is the invention here? It’s not presenting a coupon to a merchant. That’s old. It’s not selling stuff on the web, that’s also old. It’s not keeping a user focused on a web page. That’s old. And it can’t be simply the idea of combining all those things because it’s incredibly obvious and the PTO guideliness about the obviousness of that sort of computer related crap is also old.

    The only possibility is that there is something special about the specific computer code that embodies the “means for participating” recited in the claim. It must be written in a way that allows the computer to function in manner that a skilled programmer would find unexpectedly fast.

    Laughably (and predictably), the code is absent from the specification.

  15. @6:

    From Chisum section 18.03[2][a], Canons of Claim Construction:

    “If the claim is fairly susceptible to two constrcutions, that should be adopted which will secure to the patentee his actual invention.” Smith v. Snow, 294 U.S. 1, 14 (1935)

    “A claim interpretation that would exclude the inventor’s device is rarely the correct interpretation.” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550, 37 USPQ2d 1609, 1612 (Fed. Cir. 1996) cert devied sub nom. Showa Aluminum Corp. v. Modine Mfg. Co., 518 U.S. 1005 (1996)

    “Claims shuold be construed as one skilled in the art would construe them.” Smithkline Diagnostic Inc. v. Helena Laboratories Corp. 859 F.2d 878, 882, 8 USPQ2d 1468, 1471 (Fed. Cir. 1988)

    What you propose to do, construe the claim to cover performing A then B then C, regardless of whether X=Y, would literally exclude from coverage the inventor’s device as taught and as claimed. Such an interpretation is unreasable. Your position is untenable. It takes REAL MAN to admit when he’s wrong.

  16. @6: “The ‘infringers’ perform A then B then C. It just so happens that in some of there processes X is equal to Y and in some it is equal to Z. They do not care if it is Y or Z.”

    No. If the claim says “PERFORMING C ONLY IF X=Y,” and the alleged infringers do not stop doing C when X is not equal to Y, they don’t infringe. And it DOES matter during prosecution what a PHOSITA would apprehend the claim to mean upon reading the claim and the specification. It is the PHOSITAs understanding that places a limit on what is the broadest REASONABLE interpreation of the claim language. That you, an Examiner, do not know that, is truly alarming, yet it does not surprise me in the slightest. Have you even heard of Chisum?

  17. Max, I think I might be the only one on this side of the pond who has actually read Catnic. I suspect that no-one else knows what you’re talking about.

    FWIW, I’m a Brit, but couldn’t get hired as a TA over there so that I could take the CIPA exams. However, here in the US of A, anyone who meets the educational requirements can take the patent bar. Now, if they just had the NHS …

    Alun Palmer, US Patent Agent

  18. Not to come between you and your man MM, there’s a bit of a prob broje, method claims usually start out with “comprising”. You know what I mean? So let’s say that the patentee did get a claim to what you assert. And let’s say that the defending side does perform the method you assert. Do they infringe? Yes, yes they do. Notwithstanding your poshita understanding argument.

    To be specific. The claim is as above. The “infringers” perform A then B then C. It just so happens that in some of there processes X is equal to Y and in some it is equal to Z. They do not care if it is Y or Z.

    The fact that they do not care is irrelevant if in fact ABC happens in an instance where X=Y. They infringe.

    Now, perhaps the claim was amended to recite that there was a determination made as to whether or not X=Y, then perhaps there is no infringment. Then again, it isn’t in the claim, so we’ll never know.

    Don’t worry. I already know what your response is. Your respose is “well what about in that case, is there infringment then?”. The answer is that you’re bringing up just another PITA question which I’ll be bothered with when I see it in front of me and not before as it will be a tough call, what with the old comisky and all relating to 103.

    “Drafters should not have to explicitly recite the steps of “making a determination whether X+Y”

    They will when they’re before me whether you deem that they “should” or “should not”.

    “but no PHOSITA would understand the claim to read on merely doing A then B”

    No poshita would understand the claim to mean anything, because he’s never read it. Why? Because then he’s willfull.

    But, even assuming you paid a poshita to read it once through in a prefunctory fashion the question does not hang on his view alone during prosecution, which is my domain. Perhaps if you escaped to the no man’s land which is the caselaw on presumption of validity post issue without drawing my ire then you would have a chance with your ridiculous arguments. And when we consider the difference between my domain and your post issue court infringment finding then we must also adjust our standard for what the claim encompasses in prosecution, rather than relying on what is found in the post issuance infringment hearing. And when we make that small adjustment, it is assured that the claim without the “determining” step recited fails in prosecution.

    Girls arguing infringment and patent policy on my interwebz. Sheesh, what’s next?

    Oh, and fyi, making you recite the portions of your invention which distinguish it from the prior art before you get a granted app is never improper. This is what makes for a better patent system for all involved.

    Protip: When faced with a claim reciting “determining” as above, simply find in the reference where it is stated that X does equal Y, rather than the determination being made in the method itself. Then designate the reader of the reference as having performed the determination in their head as they were reading the reference and presumably performing the method in the lab. Insta claim elements to go, deliverd in 30 minutes or less. I’ve used this a couple of times now. Works like a charm.

    Oh, and anyone concerned about me upholding the “law” and having sent out a “bad rejection” to a perfectly meritorious application, spare me. I’m not even sure if this is a legit way to distinguish a method since making a decision based on a determined variable is hardly a method step, and we all know methods must be distinguished in terms of method steps.

    Also, this poast was roasted before mooney posted his last comment or you posted yours.

  19. MM “without them, we’d be taken over by the Chinese or something.”

    You could say the same thing about all patents.

    Now picture a civet cat wearing a straw hat and a face mask. The caption reads: I Canz Pwn Your Biotex!

  20. DWI “There are hundreds of patents that are continually getting issued on a monthly basis that include certain limitations that involve algorithms and certain limitations that could arguably cover “thinking about things.”

    Yes, I know. And without them, we’d be taken over by the Chinese or something.

  21. “I’ll say it again: prosecutors of certain types of patents are the whiniest crybabies in the legal universe. Is it because they are less educated? Relatively immature? Or is it because they’ve been spoiled for too long?”

    Don’t panic. Talking to yourself on occasion is perfectly normal. But you should avoid generalizing such comments to all biotech practitioners.

  22. “Imagine that the users of “A then B” were taken to court by the patentees of “A then B, then C but only if X=Y.” To prevail, the the defendants would merely show that they do not even make a determination whether X=Y, much less cease doing C when X is not equal to Y.”

    To which the patentee would reply: our claim does not recite a “determination” step, nor does the claim recite a “ceasing” step.

    “Drafters should not have to explicitly recite the steps of “making a determination whether X+Y; and selectively performing C in response to the determination.”

    I’ll say it again: prosecutors of certain types of patents are the whiniest crybabies in the legal universe. Is it because they are less educated? Relatively immature? Or is it because they’ve been spoiled for too long?

  23. @MM:

    You said, “consider the broadest reasonable construction of the claimed method. When x is not equal to Y, then this claim would by infringed by ‘A then B’.”

    FAIL.

    Imagine that the users of “A then B” were taken to court by the patentees of “A then B, then C but only if X=Y.” To prevail, the the defendants would merely show that they do not even make a determination whether X=Y, much less cease doing C when X is not equal to Y.” There would be no finding of infringement.

    As you said, “consider the broadest reasonable construction of the claimed method.” I don’t think you know what “reasonable” means.

    Drafters should not have to explicitly recite the steps of “making a determination whether X+Y; and selectively performing C in response to the determination.” But we do it just to avoid the brainless nonsense perpetrated by you and your Examiner clones. You can say that yellow is blue all you want, but no PHOSITA would understand the claim to read on merely doing A then B, with no determination whether X=Y or selective performance of C in response to the determination.

    So I say again, FAIL.

  24. “Algorithms aren’t patentable. Methods of thinking about things aren’t patentable.”

    There are hundreds of patents that are continually getting issued on a monthly basis that include certain limitations that involve algorithms and certain limitations that could arguably cover “thinking about things.”

    No amount of your belly-aching and whining like a little girl that didn’t get her pony for Christmas is going to change that fact.

    You are like “the emperor with no clothes.” Wrapping yourself in the illusory decision of Bilski, you believe that any method that involves a computer, algorithm, and/or thinking is dead in the water. However, unlike the emperor, you have been told that you have no clothes, yet you still revel in your ignorant nakedness.

    The decisions out of the BPAI these days are mostly for appeals that were filed years ago (this appeal was docketed in 2007 – well before Bilski came out in late 2008). Bilski is no more than a PITA that can be overcome with a few minor amendments.

  25. You are no doubt correct. It would also be nice to see the briefs. Which I could perhaps also see in the Benson file. In any event, I refer not only to the USSC case, but to the lower court cases as well. Iirc it went examiner>board>CAFC>USSC>CAFC>board>examiner. It was a CAFC decision right before they handed it back to the board which is oft misquoted.

  26. “And in any event it is always nice to be able to get a context for the ruling which you are looking at.”

    It might be nice, but it could also be misleading. Do you think the Supreme Court’s ruling in Benson was based on the justices’ individual readings of the application? The correct answer is no – their ruling was based on the “facts” as presented by the litigants in the briefing. Context is nice to tell you whether a court got it “wrong” in the normative sense, but it can lead you astray if you want to understand the positive law of the case.

  27. “Last checked, patentable subject matter includes methods.”

    News flash: not everything that can be labeled “a method” is patentable. I hope this doesn’t come as a shock to you.

    Algorithms aren’t patentable. Methods of thinking about things aren’t patentable.

    Deal with it.

  28. “hitherto”

    first maxDrei uses the word twice in one sentence, then 6 uses it.

    “A method that that recites the term “if” is an algorithm.” [sic]

    So what? Last checked, patentable subject matter includes methods. Let’s pull 6′s favorite out and check wikipedia for algorithm:

    “an algorithm is a finite sequence of instructions, an explicit, step-by-step procedure for solving a problem, often used for calculation and data processing.”

    Malcolm, so what’s your point?

    Further, the condition of X not equal to Y is not presented in the hypothetical. So, 102 is NOT appropriate, A then B may anticipate, but then again, it may not – 112 the sucker.

    No, you’re welcome.

  29. “”A then B then C but only if X=Y” is not the same logical circuit as “A then B.”"

    Logical circuits? Is that an article of manufacture? LOL.

    We’re talking about a method. And a prior art method that recites “A then B” is indeed “the same” for anticipation purposes as a claimed method that recites “A then B, then C but only if X=Y.”

    To understand why this is the case, consider the broadest reasonable construction of the claimed method. When x is not equal to Y, then this claim would by infringed by “A then B”. It is therefore anticipated by “A then B.”

    You’re welcome.

  30. “Gottschalk v. Benson. But why on earth would you need Benson’s 40-year-old application?”

    We were discussing in another thread about the ramifications of Benson’s deps and the other ind’s in the application in conjunction with the reasoning in Bilski iirc. And in any event it is always nice to be able to get a context for the ruling which you are looking at.

    Take for instance the widely misinterpreted (and misquoted) Zurko decision. If you follow Zurko from claims all the way up to the final BPAI decision it is an interesting ride. None of the pieces of which should be left out in order to have a good grasp on what is occuring. Although you might can pick it up from the individual pieces themselves, it is all too often the case that some little tidbit is taken out of context. This would happen more rarely if the whole history of the case were read.

    “Doesn’t matter. Properly construed, it’s a functional limitation that merely describes a capability of a device used in the method.

    A method that that recites the term “if” is an algorithm.

    A prior art method that recites either series of steps in the pathway would anticipate the claim. So a claim that recites “A then B then C but only if X=Y” is anticipated by a prior art method of “A then B”.”

    Indeed, I am taking a jaundiced view of these conditional limitations in claims pending before me. It closely resembles what I believe MM is trying to enunciate.

    I do wish Landis would write on the subject but hitherto I have found no mention of the issue in my readings.

  31. @MM

    ISSUE: You said “a claim that recites ‘A then B then C but only if X=Y’ is anticipated by a prior art method of ‘A then B’.”

    RULE: For anticipation, the test is, would the process, “A then B,” infringe a claim to the process “A then B then C only if X=Y.”

    ANALYSIS: The answer is no.
    “A then B then C but only if X=Y” is not the same logical circuit as “A then B.” “A then B” does not necessarily entail making a determination whether X=Y, and then, if not, not performing C. But “A then B then C but only if X=Y” does necessarily entail those restrictions.

    CONCLUSION: Therefore, the prior art process, “A then B,” does not anticipate the claim “A then B then C only if X=Y.”

  32. “But what if the claim said “if and only if?” Would you then agree that it is a limitation?”

    Doesn’t matter. Properly construed, it’s a functional limitation that merely describes a capability of a device used in the method.

    A method that that recites the term “if” is an algorithm.

    A prior art method that recites either series of steps in the pathway would anticipate the claim. So a claim that recites “A then B then C but only if X=Y” is anticipated by a prior art method of “A then B”.

  33. @MM

    You said, “I’ve eliminated the ‘if’ clause as it is plainly a non-essential step.”

    But what if the claim said “if and only if?” Would you then agree that it is a limitation?

    In the computer software arts, every PHOSITA knows that an “if” is an “if and only if.”

    So why do you insist on interpreting the claim language in such an unreasonable way? Were you an Examiner at one point?

    I hear that it is impossible to reason someone out of a position that they did not reason themselves into. So, just how unreasonable are you?

  34. “Probably the worst thing about some hypothetical opinions is that they are based on hypothetical applications which may never make it into the public. See for example that BCD case the name of which I forgot. That case is so old even I can’t get ahold of a copy without a lot of work. It may even be destroyed or something by now.”

    Gottschalk v. Benson. But why on earth would you need Benson’s 40-year-old application?

  35. “When you qualify for points, you used to get redirected to another party’s site. ”

    How do you know?

    I’m not going to say the site just yet because I haven’t read what the means are in the spec. But I’m doubting they’re anything but the usual suspects.

    My favorite thing about this opinion though is how the board sends out a 112 without an accompanying action on the merits. They take away the already affirmed 103′s that they just got through affirming (at least I think this is what happened from what they wrote) and then send out a 112. A big ol’ no no for examiners but not for the board? Ridiculous. Even though I dislike only them getting a pass, if you don’t get by 101\112 then there should be no merit based rejections. Unless it’s a mere tiny 101/112 issue rather than the ridiculously confounding ones we get all too often.

    Probably the worst thing about some hypothetical opinions is that they are based on hypothetical applications which may never make it into the public. See for example that BCD case the name of which I forgot. That case is so old even I can’t get ahold of a copy without a lot of work. It may even be destroyed or something by now.

    “When was this filed? I assume it must have been shortly before the creation of the Internet.”

    Some hypothetical cases do actually have decent filing dates.

  36. Mooney–

    Do you think that there would be any merit to considering a programmable general-purpose computer as merely a tool, and “software” claims as claims to a “method of using” that tool?

    That way, new hardware architecture could be patentable, and potentially new firmware as well, maybe even a new programming language.

    Software that “causes a change in the state” of the computer would be evaluated according to the normal process for evaluating the new use of a known tool, which would make most (if not all) of it unpatentable.

  37. “The part of this opinion that bothers me is that it’s an apparatus limitation in a method claim that’s being interpreted under 112 paragraph 6. Typically apparatus limitations in method claims are ignored.”

    Okay, then here’s the claim: A method, comprising providing something at a website that is capable of transferring value from a merchant to a consumer.

    (I’ve eliminated the “if” clause as it is plainly a non-essential step).

    Pure garbage, friends. Pure garbage.

    And there is so much more of this floating out there.

  38. Emma “I don’t think “focus of activity” is particularly unclear. When you qualify for points, you used to get redirected to another party’s site. The invention is this no longer happens.”

    Dear Emma,

    Thanks for the heaping pile of b.s.

    Yours truly,

  39. As with the Jella decision, i think the Board is living dangerously issuing precedential decisions based on non-published applications. If the applicant(s) waived confidentiality, or former Director Dudas approved, we don’t seem to have that information provided in the decisions.

  40. Ivan & Paul:

    I think the impetus for the SPE’s rehearing request was the CAFC’s Aristocrat decision, which arguably expanded the WMS holding that a general purpose computer requires an algorithm as part of its structure in a m+f claim.

  41. To Coil and Ken:

    The classic “wide for anticipation and narrow for infringement” is that little word “for”. As in reading “for” as “suitable for” when comparing the claimed “for” with the art, yet “intended for” when asking whether a machine infringes that claim. Take “means for” and it gets yet murkier.

    Of course a PHOSITA knows what “means for” means, and it’s NOT what 112-6 says it means. “Cutting means”, to everybody except a patent lawyer, means “everything under the sun that cuts” what it’s supposed to cut, in the context of the claim (butter at kitchen temperature, or high carbon chrome bearing steel at arctic temperature).

    The English courts manage perfectly well without any Doctrine of Equivalents, to impose claims on those who operate within the scope of a patent claim, purposively construed, as if by the PHOSITA, by asking the question “What was the inventor using the language of the claim to mean”. That would deal with ovens at or to 400°F as in the Chef America case (where the Doctrine of Equivalents doesn’t help much, to give the inventor a fair scope of protection).

  42. The really novel aspect here seems to be an SPE [instead of the applicants] challenging a Board decision adequacy by requesting a rehearing. Did someone on the Board encourage that? Was this issue originally briefed for this appeal?

  43. Max

    It seems to me that it is very important to protect inventors against others avoiding patent infringement by use of “equivalent means”. For sure, a patent attorney should not rely on any doctrine of equivalents to cover possibilities that s/he is in a position to describe and claim explicitly, but natural justice demands some kind of fallback, within reason, for the unforeseen.

    Personally, I think the PHOSITA’s perspective should be the focus of all patent analysis, including “means for” language (I don’t think the PHOSITA would have any particular problem interpreting Catlin and Rowney’s “means for…”). Drafting practices that wilfully obscure whatever it is that is supposed to have been invented should be punished under 112.

  44. The part of this opinion that bothers me is that it’s an apparatus limitation in a method claim that’s being interpreted under 112 paragraph 6. Typically apparatus limitations in method claims are ignored. The analysis here is to see if the claim was restricted to a particular machine under Bilski. So apparatus limitations in method claims are ignored to determine claim scope or obviousness but not ignored for patent eligible subject matter.

  45. “Seems to me that the BPAI implicitly admits that a general purpose computer programmed with a specific algorithm is in fact a particular machine for the purposes of 101-Bilski analysis.”

    Maybe, but that would be a pretty weak implication. The claim already refers to an on-line system and a merchant’s website, so you already have ties to a networked webpage server. That’s a specific machine in my book.

  46. It sounds like this was the right answer on the merits, but I’m confused about the procedure–the SPE requested a rehearing from the Board? So the SPE told them they got it wrong and should try again?? Was the relevant argument left out of the Examiner’s Brief, etc., or do SPEs just get to ask the Board to reconsider if they don’t like the result? Doesn’t seem impartial to me.

  47. Wouldn’t this be Bilskied anyway? Also, it seems like it reads on any online website that allows a customer to cancel an order and have their account credited.

  48. So…a general purpose computer programmed with a specific algorithm is structure — specifically it is a special purpose computer.

    Seems to me that the BPAI implicitly admits that a general purpose computer programmed with a specific algorithm is in fact a particular machine for the purposes of 101-Bilski analysis.

  49. My contribution to “reform” would be to ban use of that horrible fuzzy word “equivalent*”. It causes trouble wherever it goes, including the 6th para of 35USC112, and the whole of Europe.

    There is no need for it. If it simply isn’t available for your use, in the legal toolbox, you can’t use it. That’s a good thing, for then you have to think more about what is the correct legal tool, and use that instead.

    Any fans of “equivalent” out there?

  50. “Is an algorithm really required?”

    If the only described physical structure that appears to correspond to the “means” is a general-purpose computer, then yes, an algorithm is required. See WMS Gaming.

  51. Of all the excellent reasons why this application should be refused, the use of “means” ought to be the very least of them.

  52. “This rule of construction means that seemingly broadly written means limitations are often quite limited in practice — especially when the specification is not thoroughly drafted.”-true!

  53. I don’t think “focus of activity” is particularly unclear. When you qualify for points, you used to get redirected to another party’s site. The invention is this no longer happens. The killer, as Stein points out, is trying to use a means element without showing corresponding structure. There is a case out there that says in software claims, one correspnding structure is an algorithm but I can’t find it right now.

  54. So these guys are trying to claim the presentation of a coupon to a merchant at a checkout counter.

    BUT ITS ON TEH INTERNET AND USES A POWERFUL COMPUTER BRAIN!!!!!!!!

    “whereby said consumer’s focus of activity remains at said merchant’s web site”

    Focus of activity? LOL.

  55. When was this filed? I assume it must have been shortly before the creation of the Internet.

  56. No-brainer.

    Short answer: Bad practitioner, no cookie.

    Slightly longer answer: Any practitioner who includes the word “means” (or “step”) in a claim had better know what they’re doing. And the rule violated here (defining the “means” as a set of choices in the spec) is pretty much Rule #1. That rule is but one (among many) reason for avoiding 112p6 like the plague.

    This isn’t even a “software” case. The same result would have been reached (with a comparatively high degree of confidence) in any field.

    - David Stein

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