Ex parte Schulhauser

When a method claim recites steps that need to be performed only if a condition precedent is met, the broadest reasonable interpretation covers a method in which the condition is not met, so the Board need not require prior art evidence of the contingent steps and only has to show the steps that must be performed. By contrast, for a system claim whose structure performs a function tied to a condition precedent, the claim still requires structure capable of performing that function, so the Examiner must cite prior art that discloses or renders obvious such structure. No prior precedent directly addressed this issue as the text shows; the Board only notes that it had previously construed similar method steps the same way in Ex parte Fleming, Ex parte Urbanet and Ex parte Katz (non-designated decisions it cites). For an examiner, a prima facie case of obviousness for a method claim with contingent steps needs evidence only for the steps that must always be performed, and need not address the contingent steps. For an applicant, arguments that the art lacks the contingent steps or their claimed order are unpersuasive as not commensurate with the broadest reasonable interpretation, but a system claim with means-plus-function limitations tied to conditions is narrower and the Examiner must show the corresponding structure. The Board relied on Federal Circuit authority including In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004) for broadest reasonable interpretation, Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368 (Fed. Cir. 2001) for the principle that what would literally infringe if later anticipates if earlier, and WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) for the structure of computer-implemented means-plus-function claims. LEGAL TEST OR STANDARD: Claims receive their broadest reasonable interpretation consistent with the specification. A proper interpretation must at least encompass the broadest interpretation for purposes of infringement, since that which would literally infringe if later anticipates if earlier. For a method claim, steps conditioned on a condition precedent need not be performed if the condition is not met, so they are not required to be shown in the prior art. For a system claim, the structure (a processor programmed to perform the algorithm) is present regardless of whether the condition occurs, so the Examiner must cite prior art disclosing or rendering obvious that structure. TRIGGERING FACTS: Claim 1 recited triggering an alarm if the electrocardiac signal data is not within threshold criteria, and determining activity level if the data is within the criteria. These steps are mutually exclusive, so the method could end after the alarm without reaching the remaining steps. The Examiner showed obviousness of the collecting, comparing and triggering steps. Claim 11 recited means-plus-function limitations corresponding to a processor programmed with the Figure 4 algorithm, so all the functions had to be capable of being performed. KEY QUOTE: "Thus, in order to show anticipation or obviousness of a claim reciting structure that performs a function tied to a condition precedent, the Examiner must cite prior art that discloses or renders obvious such structure." (Paper N/A, p. 15) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board notes it previously construed similar method steps in this manner in Ex Parte Fleming, Appeal 2014-002849, 2014 WL 7146104 (PTAB Dec. 12, 2014) (expanded panel decision on rehearing), Ex parte Urbanet, Appeal 2011-002606, 2012 WL 4460637 (PTAB Sept. 19, 2012), and Ex parte Katz, Appeal 2010-006083, 2011 WL 514314 (BPAI Jan. 27, 2011). PRACTICE TIP: When drafting or defending method claims, do not rely on contingent steps or their order to distinguish prior art, because under the broadest reasonable interpretation they need not be performed. Amend to require the steps unconditionally, or pursue system claims with structure tied to the conditions, where the Examiner must show the structure.