BPAI: First Decide Indefiniteness, then Subject Matter Eligibility

Ex parte Adelman, Appeal 2010-011767 (BPAI 2012)

As part of what seems a sign of change, the BPAI in recently refused to decide a patent appeal on statutory subject matter grounds and instead found Adelman’s claims invalid under a new grounds of rejection — indefinite under 35 U.S.C. § 112, 2nd paragraph.  The Board noted that the indefiniteness of the claims meant that the subject matter eligibility question could not be “reasonably understood without resort to speculation.”

The patent application is owned by Go Daddy Group and claims a “system for designating membership in an online business community.”  Claim 1 includes two elements, both written in means-plus-function (MPF) language.  The first element is a “means for designating a plurality of Members…” and the second is a “means for providing … a membership designator.”  In reading the specification, the Board concluded that the claimed functions lacked any corresponding structures in the specificication.  “The Specification therefore fails to disclose an algorithm corresponding to the recited function at issue in independent claim 1, such that one of ordinary skill in the art could determine the scope of independent claim 1.”

In several cases, courts have designated subject matter eligibility as a “threshold” concern.  Here, however, the Board held that they were compelled to first consider indefiniteness — citing In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.”).

30 thoughts on “BPAI: First Decide Indefiniteness, then Subject Matter Eligibility

  1. Think Alappat.

    The Feds there overruled the PTO when it interpreted the MPF claims broadly, like a method claim, when the MPF elements, when construed under 112(6) actually read on real hardware.

    Alappat has not been overruled. It seems to require claims construction of MPF elements before turning to 101.

  2. Was there “conflation” of different “areas of the law” in this case

    I don’t know Troll, did you get your hands on it?

    LOLZ on the What-Ev man.

  3. what WAS interesting was Rader’s suggestion in Ultramercial that a “formal” claim construction need not be made in order to determine 101 issues.

    I think it is true that a “formal” claim construction is not strictly necessary to decide that a claim is ineligible under 101. I can give you reams of trivial hypothetical claims to prove this point but I’m confident that I don’t need to do that. You can imagine those claims yourself.

  4. a judge who conflates different areas of “seamless” law.

    Was there “conflation” of different “areas of the law” in this case, sockie?

  5. That depends on your philosophical views and whether you think someone intimately involved with drafting a law has any business beign a judge using that law, as opposed to a judge who conflates different areas of “seamless” law.

  6. Said “point” is one of basic logic only, and has been made independently by many, including myself on the Ultramercial v Hulu thread last year.

    It’s not really interesting–what WAS interesting was Rader’s suggestion in Ultramercial that a “formal” claim construction need not be made in order to determine 101 issues.

    Once again, he either doesn’t have a good handle on the issue, or was extremely inarticulate in the opinion, where he generalized that suggestion to include ANY AND ALL claim construction, not limited to “formal” claim construction.

  7. Justice Rich? Didn’t know he got that promotion.

    I thought he was a saint …

    BWAHAHAAHHAHAHAHAHAHAHAHA!!!!!!!!!!

  8. Of course, patent practitioners would benefit from a copy of Paul’s book too. Forgive me for assuming Paul, but I would image that your book is predominantly directed to those drafting patent applications and patent claims. My guess, if more patent practitioners read Paul’s book, less issues like this would come before the patent office.

  9. Kappos should spend some of his new money buying each of his Examiners a copy of your book Paul.

    Interesting contrast between the USPTO and the EPO on how to construe the claim. While the USPTO has 35 USC 112(6), in the EPO there is nothing wider than a M+F claim.

    Years ago, the EPO acting as IPEA for American applicants, used to lead off with assertions that the claim was indefinite. The reaction was outrage. So they retreated and came up with a new plan, leading off with prior art objections which relied on a BRI interpretation of claim 1. They found this approach was effective to zero in on patentable matter much faster and more efficiently.

    So, what works well in one jurisdiction might be a bad idea to adopt in another jurisdiction, one that includes 35 USC 112(6).

  10. Maybe, just maybe, as a chemical practitioner, you should keep your comments on the items you have some knowledge about.

    Justice Rich? Didn’t know he got that promotion.

  11. I really do not care about 101 as a chemical practitioner, but it seems to me that all of this nonsense is a direct result of State street. Maybe, just maybe, Justice Rich got this one wrong.

    I am glad to see that someone is just now even considering 112, second.

  12. There is nothing surprising or unusual about this decision. Before it could decide on subject-matter eligibility the Board had to construe the claim. This was in means + function form, so under 35 USC 112(6) it was necessary to look for the corresponding structure. However, the specification provided no such structure. The claim fell at this point and there was no need to go further.

    There was no way that the Board could or should have considered subject-matter eligibilty without first having construed the claim. So the reason why there was no 25 USC 101 analysis is that this point in the decision had not even been reached before the claim fell.

    Moral: BLACK BOX CLAIMS ARE DANGEROUS because it is only too easy to overlook the requirement for supporting description andthink that the box itself suffices, see FUNDAMENTALS OF PATENT DRAFTING where the poit was made some time ago.

  13. The critical point of the appeal, and you get nothing?

    You get three pages of reasoning. See pages 32-34 of the Examiner’s Answer.

    Would you have felt better if they’d had their secretary retype it into the body of the decision?

  14. The critical point of the appeal, and you get nothing? There’s no excuse for the BPAI backlog (or cost) if this is what we can expect going forward.

  15. Applicant drafts overly broad claims in an attempt to gain protection for something they did not invent. CHECK

  16. “We are not persuaded the Examiner erred in asserting that Bunnell anticipates independent claim 6 (App. Br. 7-9; Reply Br. 6-10). Appellants assert that Bunnell does not disclose aspect b) recited in independent claim 6. We agree with and adopt the Examiner’s findings and rationales concerning this rejection, as set forth on pages 32-34 of the Examiner’s Answer.”

    Is that a form paragraph?

    Is that what we are going to get for our $4000 appeals? Form paragraphs?

  17. Let’s see …

    BPAI finds a new grounds (112 2nd)? CHECK
    BPAI sends appeal back down to Examiner? CHECK
    BPAI wastes everybody’s time? CHECK
    BPAI quits work early and hits the golf course? CHECK

    And you wonder why government workers have the reputation they do?

  18. The patent application is owned by Go Daddy Group and claims a “system for designating membership in an online business community.” Claim 1 includes two elements, both written in means-plus-function (MPF) language. The first element is a “means for designating a plurality of Members…” and the second is a “means for providing … a membership designator.”

    I just threw up in my mouth a little bit.

  19. Wow, look at that, Chief judge comes to town and all of a sudden miraculously his views start to permeate the office.

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