TIME TO RETHINK SOFTWARE APPARATUS/SYSTEM CLAIMS? In the wake of IPXL Holdings, LLC v. Amazon.com, where the Federal Circuit held that mixing method and system claims results in invalidity, the USPTO Board of Patent Appeals and Interferences (BPAI) followed suit by recently releasing a similar (but non-precedential) decision in Ex Parte Moore.

The case revolved around a patent application filed by Xerox dealing with backlash reduction in printers by stopping a substrate (i.e., paper) short of a printing position, then slowly advancing the drive system to move the substrate to the printing position. A stepper motor drives a driven roller via a gear train, and stops the substrate a predetermined number of steps shy of the printing position. The stepper motor is then advanced by the predetermined number of steps, taking up backlash and moving the substrate to the printing position. A controller (i.e., processor) coupled to sensors assists in moving the motor.

The problematic claim was claim 24, which recited:

24. A backlash reduction apparatus comprising:

a drive motor operable in increments;

a drive train driven by the drive motor;

at least one substrate transport mechanism connected to the drive train and driven by the drive motor therethrough;

a controller . . . the backlash reduction apparatus executing a method comprising: advancing a substrate to a point short of a final intended position; and finally advancing the substrate to the final intended position, thereby taking up backlash in a substrate transport system.

The BPAI rejected the claim under 35 U.S.C. 112, second paragraph as indefinite for failing to specify whether an apparatus or method was being claimed. Also, the claim was rejected under 35 U.S.C. 101 for encompassing two statutory categories (apparatus and method).

Again, the problem here is not so much with the decision, as it is with the implications such rejections have for software patents. Obviously, the applicants will amend the claims to remove the words "executing a method comprising," and to massage the rest of the language to comport with the structural recitations in the claim (see, e.g. claim 9 in the application).

As was pointed out previously on this blog, it appears that a door has been cracked open to challenge software patents on this principle. Just about every apparatus or system that relies on processors and software for novelty will inherently mix method steps within a recited apparatus or system structure. And while this case and IPXL Holdings appear to be more clear-cut instances of incorrect claim format, there doesn't seem to be a "bright line" where functional claiming (which is allowed) can be transformed into a "method" claim that could render a claim invalid. In a business where we must explain how conduct should be adjusted to comply with the rules of patent law, things are beginning to move in a manner where at some point (especially in claim construction), it will become increasingly difficult to tell exactly where the line is at any given time.