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.”).