- Under 35 USC 112P6 and 112P2, Means-Plus-Function (MPF) software apparatus claims require an Algorithm (to program the computer to perform the function claimed) and
- Apparatus claims for a computer programmed to perform a function, that do not contain sufficient algorithm/structure, are interpreted and analyzed as Means-Plus Function (MPF) claims under 35 USC 112P6.
Patent application Spec and Figs
Rodriguez’s Patent application involved programs for computer chip and circuit design and layout. (Title: Automated random verification of complex and structurally-variable systems). The application included 4 types of claims: apparatus (non-MPF), MPF apparatus, method and computer readable media. The Spec. describes the flowcharts that map to claim elements (MPF and non-MPF). The spec also states that “appropriate software coding can readily be prepared by skill programmers”.Apparatus claim 1:
1. An apparatus comprising:
•a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system;
•a system builder configured to (i) build a system level netlist and (ii) generate system parameters in response to said random system configuration file; and
•a simulation verification environment configured to verify said structurally variable and complex system in response to said system level netlist, wherein said simulation verification environment is configured to provide automatic random verification of said structurally variable and complex system in response to said random system configuration file.
* NOTE: claim maps to fig 1 flow chart
Means-Plus-Function patent claim 10 was like Claim 1 with “means for” replacing – configured to—.
Method claim 11:
11. A method for automated random verification of structurally variable and complex systems, comprising the steps of:
(A) generating a random system configuration file of said system;
(B) generating one or more parameters of said system in response to said random system configuration file;
(C) generating a system level netlist of said system in response to said random system configuration file;
(D) verifying one or more target modules with said system in response to said system level netlist; and
(E) automatically and randomly adjusting step (D) in response to said random system configuration file.
“configured for” construed as 112P6 Means-Plus-function element - For apparatus claim 1, the board found that the 112P6 applied to apparatus claims (e.g., Claim 1) that did not used “mean for” language because the claim element recites a function without sufficient structure to perform the function. Op. p. 14.
- The Board looked at “system configuration generator”… “system builder” in “configured for” claims (C1)– to see whether they had any structureTherefore the Claims using “configured for” are interpreted as MPF claims.
–General and subject specific dictionaries and Prior art patents but found no structure that supports the claimed functions
–Spec also no description to inform POSITA the meaning of terms.
- Ruling – claim elements are verbal constructs not recognized as the name of a structure
Means-plus-function claims rejected because no algorithm in Spec. - The BPAI examined Claims 1 and 10 (4 M+F elements) and found no corresponding algorithms.
In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to provide automated random verification of complex and structurally variable systems. ..The board cited Aristocrat to note that “[T]he corresponding structure for a 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Board cited an example in Aristocrat, that a mere reference to using "appropriate programming" imposed no limitation whatever on the structure corresponding to the functions. Aristocrat v. IGT, 521 F.3d 1328, (2007-1419) (Fed. Cir. 2008) is a recent leading case on Mean-plus-function claims in software programs implemented on processors/apparatus.
•Similar to the "appropriate programming" discussed in Aristocrat, 521 F.3d at 1334, Appellants merely indicate that "[a]ppropriate software coding can readily be prepared by skilled programmers" (FF 12).
The Board found 4 Means-plus-function elements in Claims 1 and 10 and also found no algorithms in the spec to support the MPF functions. Therefore the Board held the claims invalid under 112P2 for being indefinite.
112 P2 – lack of Enablement - The BPIA also rejected the Method claims and the computer readable media claim (that depended from the parent method claim 11 were rejected under the Wand test for lack of enablement for undue experimentation. An over simplification of the reasoning is that the claims were so broad and the spec gave no examples, the board found that it would take too much experimentation.
Rodriguez – Conclusions for Means-plus-Function claims involving software
This BPAI precedential decision puts applicants on notice that for apparatus claims including software the BPAI intends to:
• Apply Aristocrat’s holding for MPF claims for 112 P2 indefiniteness and
•Review purely functional claim elements to see if they are MPF claims under 112P6 and comply with 112 P1 enablement and 112P2 definiteness.A Drafting Tip is that applicants claiming a software related invention as an apparatus or system with Means-plus-function claims or claims with functional elements should provide sufficient algorithm.
Related: 2 Fed. Cir. Case with sufficient Algorithms
A recent related leading Fed. Circuit case is Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008). Here the Fed. Circuit invalidated Apparatus claims construed having Means-Plus-Function elements where the claims were enabled but indefinite because no algorithm was given in the specification.For guidance on what algorithm is required for apparatus claims involving Software/program, the two Fed. Cir. Cases below are examples where sufficient algorithm were supplied.
– Dossel, In re, 115 F.3d 942 (Fed. Cir. 1997)
- AllVoice Computing PLC v. NUANCE COMMUNICATIONS, 504 F. 3d 1236 - (Fed. Cir. 2007)
