Ex parte Rodriguez

When a claim to a computer-implemented function is written in means-plus-function form, or uses a nonce term such as "generator," "builder" or "environment" that is not recognized as the name of structure, and the specification discloses no algorithm for performing the claimed function, the Board may enter a new ground of rejection under 37 C.F.R. § 41.50(b) holding the claim indefinite under 35 U.S.C. § 112, second paragraph, on the basis of Aristocrat. If such a nonce-term claim is instead not construed under § 112, sixth paragraph, it is purely functional and may be rejected under § 112, first paragraph, as not enabled commensurate with its scope, applying the Wands factors and the Halliburton rule. No prior Board precedent is named as overruled. The decision applies the Federal Circuit's Aristocrat and Blackboard line, and it follows Ex parte Miyazaki and Ex parte Catlin (both designated precedential), to computer-implemented means-plus-function claims. For an examiner, it shows that a claim whose terms are nonce words can be treated as means-plus-function even without the word "means," and that an anticipation rejection of an indefinite claim should be reversed rather than rest on speculation about claim scope. For an applicant or appellant, a specification that only says software can be written by skilled programmers, with no algorithm, exposes the claims to § 112 rejections that the Board can raise itself on appeal. Binding authority the Board cited includes Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009), In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (in banc), and Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004). LEGAL TEST OR STANDARD: Claim construction uses the broadest reasonable interpretation. A claim using "means" presumptively invokes § 112, sixth paragraph. A claim without "means" presumptively does not, but the presumption is rebutted when the term is a nonce word or verbal construct not recognized as the name of structure and simply a substitute for "means for." The Board consults dictionaries, the record, prior art and the specification to decide this. If the sixth paragraph applies, the structure for a computer-implemented function is the algorithm disclosed in the specification. A claim with no disclosed algorithm is indefinite under § 112, second paragraph. If the sixth paragraph does not apply, a purely functional claim must be enabled for its full scope. The Board weighs the Wands factors: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. TRIGGERING FACTS: Claim 10 recited four "means for" elements, and the specification disclosed no algorithm and said only that appropriate software coding can readily be prepared by skilled programmers. Claim 1 recited a "system configuration generator," "system builder" and "simulation verification environment," each followed by functional language. Dictionaries and a prior art search showed no recognition of these terms as structure, and appellants argued the elements were their advance over the prior art. The appeal brief identified no means-plus-function elements, as 37 C.F.R. § 41.37(c)(1)(v) requires. The specification had no working examples and not even one embodiment showing how to implement the system builder. The alternative enablement analysis turned most heavily on Wands factor (8), unbounded claim breadth. KEY QUOTE: "The Appellants have failed to disclose any algorithm, and thus have failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in claim 10 so as to render the claim definite." (p. 19) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is overruled. The decision follows Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (precedential), on the continued applicability of the Halliburton rule, and cites Ex parte Catlin, 90 USPQ2d 1603 (BPAI 2009) (precedential), alongside Aristocrat. PRACTICE TIP: When drafting or defending computer-implemented claims, disclose an actual algorithm in the specification for every claimed function. Do not rely on nonce terms such as "generator" or "builder," and do not assume that omitting the word "means" avoids § 112, sixth paragraph. In an appeal brief, identify the means-plus-function elements and the corresponding algorithms with page and line citations, as 37 C.F.R. § 41.37(c)(1)(v) requires.