BPAI Precedential Opinion: Software "Means" Must Disclose Algorithmic Structure

Ex Parte Catlin, Appeal 2007-3072 (BPAI, February 3, 2009) Precedential Opinion

The claimed invention was directed to a method for implementing an on-line incentive system at a merchant's web site. The application contained a means-plus-function recitation in the claims:

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 . . .

On Appeal, the BPAI noted the examiner's obviousness rejection (and surprisingly didn't raise any 101 issues sua sponte). However, the Art Unit SPE filed a request for rehearing seeking reconsideration of the Board's decision by arguing that the "means for" language was indefinite under section 112, second paragraph, since the Specification allegedly did not disclose adequate structure, material, or acts that perform the function recited in the claims.

Reviewing the Specification, the Board noted that "The Appellants' Specification does not provide . . . an algorithm by which the consumer is able to participate in an earning activity and earn value." Also, the Board noted that a description of prior art incentive programs "merely provides examples of the results of the operation of an unspecified algorithm."

Citing Aristocrat Techs. Austl. Pty Ltd. v Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), it was stated that

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.

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[A] general purpose computer programmed to carry out a particular algorithm creates a "new machine" because a general purpose computer "in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.". . . The instructions of the software program in effect "create a special purpose machine for carrying out the particular algorithm." . . . Thus, in a means plus function claim "in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm."

Turning to the application's disclosure, the Board found that

Appellants' Specification describes generally that the consumer can access an earning activity through the merchant's web site. The merchant's web site itself cannot be the means or structure corresponding to the function of the claims, because the claims recite providing "at a merchant's web site" means for a consumer to participate in an earning activity and earn value. It is clear from the claims that the merchant's web site is merely the location, through which the software that enables the consumer to participate in the earning activity and earn value, is provided. The Specification does not provide, however, an algorithm by which the consumer is able to participate in an earning activity and earn value.

The Board applied the 112 rejection and vacated the obviousness rejection, noting that "[a] rejection of a claim, which is so indefinite that 'considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims' is needed, is likely imprudent."

Read/download a copy of the opinion here (link)