November 2011 Issue
The Federal Circuit Says
Means-plus-function claim terms that lack sufficient structural disclosure in the specification to satisfy 35 U.S.C. § 112, ¶ 6, are unpatentable as indefinite under 35 U.S.C. § 112, ¶ 2. While this is not a new statement in the law, the majority of a split Federal Circuit panel in In re Aoyama, No. 2010-1552 (Fed. Cir. Aug. 29, 2011), found that a flowchart in the specification setting forth particular process steps, determinations, and results for “a method of reverse logistics” failed to sufficiently disclose structure to support the claimed “controller system including reverse logistics means for generating transfer data.” Maj. op. at 9. Judge Newman noted in her dissent that the majority’s holding heightens the requirement of disclosure for computer-implemented method claims. Diss. op. at 11.
Based on Federal Circuit precedent, the corresponding structure in the specification for computer-implemented means-plus-function limitations is not the general-purpose computer, but the specific-purpose computer programmed to perform the particular algorithm. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). And means-plus-function claims lacking sufficient disclosure are indefinite and unpatentable under 35 U.S.C. § 112, ¶ 2. Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1228, 1337-38 (Fed. Cir. 2008).
In re Aoyama involved the claim term “reverse logistics means for generating transfer data.” The majority construed this limitation as a means-plus-function term and analyzed the specification for its corresponding structure. The majority focused on Fig. 8 of the disclosure as the portion of the specification linked to the claimed function. The majority stated, however, that although Fig. 8 shows an algorithm, it only shows results that are obtained and does not describe how to achieve those results. In particular, the majority concluded that Fig. 8 fails to include any disclosure explaining how to “generate transfer data” as claimed. After concluding that the means-plus-function features of the claims lacked sufficient disclosure under 35 U.S.C. § 112, ¶ 6, the majority, on its own accord, found the claims indefinite under 35 U.S.C. § 112, ¶ 2.
In her dissent, Judge Newman noted that Fig. 8 represented a typical computer-routine format. Judge Newman also noted that the specification included a lengthy description of Fig. 8 regarding the receipt and transfer of data, and disclosed that the routine can be implemented in hardware, software, or a suitable combination of hardware and software.
Judge Newman explained that the form and content of the flowchart represent typical and established ways for describing computer-implemented processes. Quoting from Aristocrat Technologies, 521 F.3d at 1337, she stated that “the sufficiency of the disclosure of algorithmic structure must be judged in light of what one of ordinary skill in the art would understand the disclosure to impart.” The standard is not a heightened threshold, nor does it require actual software code. Judge Newman also pointed out that Federal Circuit precedent includes several examples where the Court considered a flowchart or figure, similar in form and content to Fig. 8 and its accompanying text, to disclose sufficient structure to satisfy 35 U.S.C. § 112, ¶¶ 2 and 6.
Judge Newman concluded that the majority lacked a basis for changing the practice of presenting and disclosing computer-implemented methods in patents. She criticized the majority for failing to address whether one of ordinary skill in the art would understand the disclosure as a structural algorithm to perform the claimed function of generating transfer data.
Despite the dissent, applicants using means-plus-function limitations to claim computer-implemented methods should carefully consider the corresponding disclosure in the specification to determine if sufficient disclosure exists. A flowchart, like Fig. 8 in In re Aoyama, may not be sufficient and may result in claims being rejected or considered unpatentable under 35 U.S.C. § 112, ¶ 2, for being indefinite.