Ex parte Rodriguez, 08-0693 (BPAI 2009) (Precedential) fd080693.pdf
In its first precedential decision since February 2009, an expanded BPAI panel has applied the Federal Circuit's 2008 Aristocrat decision in rejecting applicant's means-plus-function (MPF) claims as indefinite for failing to provide any corresponding structures in the specification other than a general purpose computer. From Aristocrat:
For a patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to "the corresponding structure, material, or acts" that perform the function, as required by section 112 paragraph 6.
In Aristocrat, the Federal Circuit made clear that reference to "appropriate programing" was not sufficient to transform a general purpose computer into a specific structure for 112p6 purposes. Rather, the court indicated that an algorithm for operating the computer should also be provided in the specification.
Here, the Rodriguez claim 10 included several MPF elements such as "means for generating a random system configuration file." However, the specification did not include an algorithm for generating the file apart from a statement that "[a]ppropriate software coding can readily be prepared by skilled programmers." Based on that failure the claim was found invalid as indefinite.
The Appellants have failed to disclose any algorithm, and thus have failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in claim 10 so as to render the claim definite. Accordingly, claim 10 is unpatentable under 35 U.S.C. 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at 1333.
The remaining claims did not use standard MPF claim language. However, the Board found that the remaining claims all included elements that were properly interpreted as MPF because they claimed functional elements without any "noun denoting structure." (Citing Lighting World & Linear Tech). The claim elements in question include a "system configuration generator," "system builder," and "simulation verification environment." (et al.). These are the same functional elements found in claim 10 – and thus were found indefinite for failing to provide any corresponding structure in the specification.
In many ways, this MPF structure requirement runs parallel to the written description doctrine. It may well be that one of ordinary skill in the art could easily generate a random system configuration file without undue experimentation. That potential fact is irrelevant for MPF definiteness analysis. Rather, the question for definiteness of a MPF claim is whether a corresponding structure is described in the specification.
The Board did also rejected the claims for lack of enablement under Miyazaki because the functional claim language was not "commensurate in scope with an enabling disclosure." As the use of MPF claims has dropped, this third portion of the opinion may be the most important.
- The patent application is owned by LSI and entitled "Automated random verification of complex and structurally-variable systems."
- Rejected Claim 1 is listed below.