Rule of Law: Means plus function limitation is indefinite where specification fails to disclose algorithm for programming general purpose computer to perform specified function. 35 USC 112P6, 35 USC 112P2, Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328 (Fed. Cir. 2008).
The second precedential opinion in 2009 involving software related Means-Plus-Function claims with insufficient algorithm/structure (112P6). See Ex Parte Rodriguez. The case cites the following Fed. Cir. cases involving 112P6: Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), Finisar Corp. v. DirecTVGroup, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) and Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008).
The BPAI raised new grounds of rejection for indefiniteness 112P2 for claims with Means-Plus-Function element (112P6) where no algorithm was disclosed in the specification.
The second precedential opinion in 2009 involving software related Means-Plus-Function claims with insufficient algorithm/structure (112P6). See Ex Parte Rodriguez.
The BPAI raised new grounds of rejection for indefiniteness 112P2 for claims with Means-Plus-Function element (112P6) where no algorithm was disclosed in the specification.
Representative claim 1
| 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 transferring value from said merchant to said consumer for participation in said earning activity, if said consumer qualifies, without re-directing said consumer away from said merchant's web site, whereby said consumer's focus of activity remains at said merchant's web site. |
Analysis: The Board found the “ means for” was the merchant's web site and incentive program. The Board found that the spec provide no algorithm for the function in the claims:
It is clear from the claims that the erchant'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 (Fact 2).The board also found only examples of an “incentive program” but no algorithms.
Op p. 10-11.
The court held:
The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 11- 19, and 2 1-25 depending therefrom, are unpatentable under 5 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at 35 U.S.C. 1333.TIP: This case illustrates the importance of disclosing algorithm in software related Means-plus-function (MPF) claims. Also, the importance of including a variety of claim types with include non-MPF and MPF elements.
Related links
http://www.wipo.int/pctdb/images4/PCT-PAGES/2000/152000/00021008/00021008.pdf
Definiteness (112P2), MPF 112P6, software
