Ex Parte Rodriguez : Functional Claims Invalid for Indefiniteness and Alternatively Lack of Enablement for Failure to Identify Supporting Structure

Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy

PTAB DecisionEx parte Rodriguez, Appeal 2008-000693 (October 1, 2009)

Background: On appeal of an anticipation rejection by the Examiner, the Board used its discretion to enter new grounds of rejection as to all the pending claims. In evaluating the first group of claims at issue, the Board rejected the means-plus-function claims as indefinite for failing to identify a corresponding structure beyond that of a computer. Invoking the Federal Circuit’s decision in Aristocrat, the Board stated that the specification’s failure to disclose any algorithm that transforms the general purpose processor fails to adequately describe sufficient structure and thus renders the claims indefinite under 35 U.S.C § 112, second paragraph. Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

In evaluating the remaining claims which did not use standard means-plus-function claim language, the Board determined that they invoked § 112 ¶6 as they used functional elements without structural context (e.g., “system configuration generator” and “simulation verification environment.”). The Board thus rejected these claims as indefinite under the same reasoning as the first set of means-plus-function claims. Going a step further, however, the Board issued an alternative new ground of rejection for these claims, noting that in the event these claims did not invoke § 112 ¶6, the claims would still be invalid for lack of enablement under § 112, first paragraph, because the functional claim language fails to disclose a particular structure (i.e., an algorithm) to support the function being performed and thus is not commensurate in scope with the disclosure.

Issue: Are means-plus-function claims indefinite if not supported by corresponding structure in the specification? Are apparatus claims containing functional claim elements but not in means-plus-function format similarly invalid for indefiniteness and/or for lack of enablement?

Outcome: Means-plus-function claims and functional claims in non-means-plus-function format are invalid as indefinite for failing to disclose a supporting structure (i.e., an algorithm) other than a general purpose computer. In the alternative, these claims are invalid for lack of enablement under similar reasoning.

Prosecution Takeaway: This decision serves as a reminder to Applicants of the risks of employing either traditional means-plus-function claims or functional claim language. Care must be taken to identify the supporting structure in the specification for every functional element in order to avoid challenges to claim definiteness as well as enablement.


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