Ex parte Catlin

When a claim limitation uses "means" and recites no structure to perform the function in its entirety, so that 35 U.S.C. § 112, sixth paragraph is invoked, and the function is computer-implemented, the Board must look to the specification for a disclosed algorithm as the corresponding structure. If the specification discloses no algorithm that transforms a general purpose computer into a special purpose computer, the Board holds the claims indefinite under § 112, second paragraph, and may enter a new ground of rejection under 37 C.F.R. § 41.50(b). No prior Board precedent is named in the decision as directly addressing this issue; the Board applies Aristocrat, 521 F.3d 1328, and the Federal Circuit cases following it to ex parte appeals. For the examiner, the decision shows that an SPE can obtain reconsideration, and that the Board may itself find indefiniteness for a means-plus-function claim with no disclosed algorithm. It then vacates the § 103 rejection rather than speculate about claim scope, citing In re Steele. For the applicant, the cited specification passages must disclose an actual algorithm, because a general reference to a web site or an "incentive program" is not enough. The new ground is not final for judicial review, and the applicant has two months to reopen prosecution or request rehearing. The Board relied on Aristocrat, WMS Gaming, Harris, Finisar, Net MoneyIN, Biomedino, Donaldson and Altiris. LEGAL TEST OR STANDARD: A claim using "means" presumptively invokes 35 U.S.C. § 112, sixth paragraph. The presumption is rebutted only if the claim recites structure sufficient to perform the function in its entirety. The Board then (1) identifies the function and (2) looks to the specification for the corresponding structure. For a computer-implemented function the structure is the disclosed algorithm, not a general purpose computer. If no corresponding structure is disclosed, the claim is indefinite. TRIGGERING FACTS: Claims 1, 9 and 20 recited a step of providing, at a merchant's web site, "means" for a consumer to participate in an earning activity and earn value. The claims recited no structure for that function. The Appeal Brief pointed only to the web site, an "incentive program" and Spec. page 9, lines 1-3. The Specification disclosed no algorithm for the function, and the Board's own review of the whole Specification found none. The Specification's background examples of incentive programs merely showed results of an unspecified algorithm. KEY QUOTE: "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." (p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision of the Board is directly affected. The Board follows the Federal Circuit's Aristocrat Techs. Austl. Pty Ltd. v Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), and its progeny Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) and Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). It also vacates its own earlier decision of May 2, 2008. PRACTICE TIP: For every means-plus-function limitation, identify in the specification an actual algorithm (steps, formula, flowchart or the like) that performs the claimed function, and cite it by page and line in the Summary of Claimed Subject Matter under 37 C.F.R. § 41.37(c)(1)(v). Citing a web site, a generic program, or the results of an unspecified algorithm invites an indefiniteness rejection.