Getting The Message Across

Submitted by patentadmin on Mon, 11/09/2009 - 10:35

Many self-proclaimed “inventors” seem unable to fully comprehend the distinction between a “concept” and an “invention.” This failure is most commonly seen in patent applications – often filed pro se – directed to computer-implemented processes. The patent application for such an invention typically recites one or more system components without actually disclosing a corresponding algorithm.

The C.A.F.C. has clearly decided that such a failure is fatal to patentability (Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech.) but, apparently, some people have not gotten the message. Making the point yet again, the Patent Office Board of Patent Appeals and Interferences (B.P.A.I.) has repeated it. Ex Parte Rodriguez

In the Rodriguez application, generic block diagrams were used to describe various system components, namely “a system configuration generator,” “a system builder” and “a system verification environment,” each of which was described and claimed as “configured
to…” The specification of the patent application stated that “appropriate software coding can readily be prepared by skilled programmers based on the teachings of the present disclosure.”

The B.P.A.I. held that the claims reciting the aforesaid system components were in “means-plus-function” form, holding that “…[we] must determine whether the term [used to identify the system components] is one that is understood to describe structure, as opposed to a term that is simply a nonce word* or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for’… [we] have looked to both general and subject matter specific dictionaries and we find no evidence that any of these terms have achieved recognition as a noun denoting structure.”

Not surprisingly, they found that none of the terms had achieved such recognition. Therefore, the applicants had “failed to adequately describe sufficient structure for performing the functions recited in the means element contained in [the claim of the application] so as to render the claim definite. Accordingly, [the] claim is unpatentable…as indefinite.”

Just to make absolutely certain that the applicants got the message, they went on to hold that the claim elements were purely functional and thus were not enabled without undue experimentation, i.e. lack of enablement.

THE LESSONS TO BE LEARNED: (1) If you’re going to claim a computer-implemented system component, you’ve got to disclose an algorithm for performing the function; and (2) if an invention is worth patenting, it’s worth paying a patent professional to do it right.
*We are not making this up

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