Summaries of Ex parte Erol, Ex parte Lakkala, and Ex parte Smith
PTAB Appeal, March 13-14, 2013, Nos. 2011-001143, 2011-001526 and 2012-007631
In Ex parte Erol, Ex parte Lakkala, and Ex parte Smith, the same five judge panel of the Patent Trial and Appeals Board construed the term "processor" as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph even though the claims did not recite "means [for]."
In all three cases, the Examiner had not interpreted this limitation under § 112, sixth paragraph. Instead, the Board raised the issue and entered a new ground of rejection under § 112, second paragraph pursuant to their authority under 37 C.F.R. §41.50(b).
The Erol, Lakkala, and Smith applications were all directed toward computer-implemented inventions and each claimed a system/device with a processor programmed/configured/adapted to perform the [respective] recited function(s). The Board began its analysis by noting that because the claims did not recite the word "means," there was a strong presumption against the application of § 112, sixth paragraph. The Board then looked to the dictionary definition of "processor" and concluded that a skilled artisan in computer programming would recognize the term as "a computer, a central processing unit, or a program that translates another program into a form acceptable by the computer being used." The Board noted that this definition comported well with the respective specification(s). The Board then concluded that at first glance "processor" is a non-structural term that would not be recognized by a skilled artisan as the name of a sufficiently definite structure for implementing the respective function(s). The Board then confirmed that the presumption against such a substitution was not overcome by concluding that 1) the [respective] function(s) performed by the processer were not typical functions found in commercially available off-the shelf processors; 2) the processor did not include a structural modifier (e.g., "height-adjustment" [processor]); and 3) other than the functional language itself, the claim(s) did not recite sufficient structure, material, or acts for achieving the specified function(s).
Accordingly, the Board held that the term "processor" is a non-structural term that would not be understood by a skilled artisan as having sufficiently definite structure to perform the [respective] recited functions and, therefore, was simply used as a substitute for the term "means for," thus invoking the application of § 112, sixth paragraph. The Board then looked to the respective specifications and determined that none of the specifications included an algorithm for performing the recited functions that transforms the general purpose process to a special purpose processor programmed to perform the disclosed algorithm. Therefore, the Board issued a new grounds of rejection under § 112, second paragraph, as being indefinite.
In these three cases, the Board went to great lengths to limit the scope of computer-implemented inventions though means-plus function treatment. Although it appears that the Board may not have given proper deference to the strong presumption against the application of means-plus-function when claims do not recite "means," the Board designated these cases as 'informative' and therefore may provide guidance on how the Board will treat "processor" claims going forward. The Board did provide some guidance on avoiding means-plus function treatment, including the use of structural modifiers. These cases reinforce the necessity of including a sufficient algorithm in the Specification.