Ex parte Catlin

PRECEDENTIAL OPINION
Pursuant to Board of Patent Appeals and
Interferences Standard Operating Procedure 2.
the opinion below has been designated a
precedenti al api ni on.
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte TIMOTHY J.O. CATLIN and KEVIN T. ROWNEY
Appeal 2007-3072
Application 091167,3 15
Technology Center 3600
~ e c i d e d : 'February 3, 2009
Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE, Vice Chief Administrative Patent Judge, and
LINDA E. HORNER, DAVID B. WALKER, and BIBHU R. MOHANTY,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR 5 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2007-3072
Application 091167,3 15
The Supervisory Patent Examiner (SPE) for Art Unit 3688 has filed a
request for rehearing seeking reconsideration of the Board's decision of May
2, 2008 ("Decision"), wherein the Board affirmed the rejection of claims 9-
11, 15, 18, and 19 and reversed the rejection of claims 1-8, 12-14, 16, 17,
and 20-25 under 35 U.S.C. 5 103(a). The SPE argues that the Board erred in
its interpretation of claims 1, 12, 16, 17, 20, and 22. Request for Rehearing
4.
The SPE raised some meritorious arguments in the Request which
caused us to reconsider our interpretation of the claims. Upon further
consideration of the claim language, we have now determined that claims 1-
25 are indefinite under 35 U.S.C. 5 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention. Accordingly, we vacate our original
Decision in its entirety, and substitute the following decision in its place.
The present decision vacates the Examiner's rejection of claims 1-25 under
35 U.S.C. 5 103(a) as unpatentable over Eggleston and Wolff, and, pursuant
to 37 C.F.R. 5 41.50(b), enters a new ground of rejection of claims 1-25
under 35 U.S.C. 5 112, second paragraph.
The request for rehearing is moot and therefore dismissed.
THE INVENTION
The Appellants' claimed invention is to a method for implementing an
on-line incentive system at a merchant's web site. Spec. 4:14-18. Claim 1,
reproduced below, is representative of the subject matter on appeal.
2

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1. 	A method for implementing an on-line
incentive system, said method comprising the steps
of:
providing, at a merchant's web site, means
for a consumer to participate in an earning activity
to earn value from a merchant; and
transferring value from said merchant to said
consumer for participation in said earning activity,
if said consumer qualifies, without re-directing
said consumer away from said merchant's web site,
whereby said consumer's focus of activity remains
at said merchant's web site.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Eggleston 	US 6,061,660 	May 9,2000
Wolff 	US 6,247,047 B1 	Jun. 12,2001
The Appellants seek our review of the Examiner's rejection of claims
1-25 under 35 U.S.C. 5 103(a) as unpatentable over Eggleston and Wolff.
ISSUE
The issue before us is whether claims 1-25 are sufficiently definite in
claim scope so as to evaluate the patentability of the claims in view of the
cited prior art. In particular, the issue focuses on whether the Appellants'
Specification discloses adequate structure, material, or acts that perform the
function recited in the first element of claims 1, 9, and 20.

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Application 091167,3 15
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Znc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. 	The Appellants' Specification describes generally, at page 9, lines
1-3, that the consumer can access an earning activity through the
merchant's web site:
In one embodiment, to receive value, the
consumer 110 surfs up to a web site of merchant
120, and the consumer 110 enters an "earning
activity", specified by the merchant 120."
2. 	The Appellants' Specification does not provide, however, an
algorithm by which the consumer is able to participate in an
earning activity and earn value.
3. 	The Specification describes in the Background of the Invention
different types of incentive programs, such as frequent flyer and
"pointsv-based programs. Spec. 1:17 - 2: 12.
4. 	This description of prior art incentive programs merely provides
examples of the results of the operation of an unspecified
algorithm.

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PRINCIPLES OF LAW
When a claim uses the term "means" to describe a limitation, a
presumption inheres that the inventor used the term to invoke 5 112, ¶ 6.
Altiris, Inc. v. Symantec Corp., 3 18 F.3d 1363, 1375 (Fed.Cir.2003). "This
presumption can be rebutted when the claim, in addition to the functional
language, recites structure sufficient to perform the claimed function in its
entirety." Id. Once a court concludes that a claim limitation is a means-plus-
function limitation, two steps of claim construction remain: 1) the court must
first identify the function of the limitation; and 2) the court must then look to
the specification and identify the corresponding structure for that function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003).
"If there is no structure in the specification corresponding to the
means-plus-function limitation in the claims, the claim will be found invalid
as indefinite." Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946,
950 (Fed. Cir. 2007); see also In re Donaldson, 16 F.3d 1189, 1195 (Fed.
Cir. 1994) (en banc).
In Aristocrat Techs. Austl. Pty Ltd. v Inter. Game Tech., 521 F.3d
1328 (Fed. Cir. 2008), the court set forth that for a claim to a programmed
computer, a particular algorithm may be the corresponding structure under
5 112, sixth paragraph:
For 	a 	patentee 	to 	claim 	a 	means 	for
performing 	a 	particular 	function 	and 	then 	to
disclose only a general purpose computer as the
structure 	designed 	to 	perform 	that 	function

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amounts 	to 	pure 	functional 	claiming. 	Because
general purpose computers can be programmed to
perform very different tasks in very different ways,
simply 	disclosing 	a 	computer 	as 	the 	structure
designated to perform a particular function does
not 	limit 	the 	scope 	of 	the 	claim 	to 	"the
corresponding 	structure, 	material, 	or 	acts" 	that
perform the function, as required by section 112
paragraph 6.
That was the point made by this court in
WMS 	Gaming, 	Inc. 	v. 	International 	Game
Technology, 184 F.3d 1339 (Fed. Cir. 1999). In
that case, the court criticized the district court,
which had determined that the structure disclosed
in 	the 	specification 	to 	perform 	the 	claimed
function 	was 	"an 	algorithm 	executed 	by 	a
computer." The district court erred, this court held,
"by 	failing 	to limit the claim to the algorithm
disclosed in the specification." Id. at 1348. The
rationale 	for that decision is equally applicable
here: a general purpose computer programmed to
carry out a particular algorithm creates a "new
machine" because a general purpose computer "in
effect becomes a special purpose computer once it
is 	programmed 	to 	perform 	particular 	functions
pursuant to instructions from program software."
Id., quoting In re Alappat, 33 F.3d 	1526, 1545
(Fed. Cir. 1994). The instructions of the software
program 	in 	effect 	"create 	a 	special 	purpose
machine for carrying out the particular algorithm."
WMS Gaming, 184 F.3d at 1348. Thus, in a means-
plus-function 	claim 	"in 	which 	the 	disclosed
structure 	is 	a 	computer, 	or 	microprocessor,
programmed 	to 	carry 	out 	an 	algorithm, 	the
disclosed 	structure 	is 	not 	the 	general 	purpose

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Application 091167,3 15
computer, but rather the special purpose computer
programmed to perform the disclosed algorithm."
Id. at 1349.
In a later case, this court made the same
point, 	stating 	that 	a 	"computer-implemented
means-plus-function 	term 	is 	limited 	to 	the
corresponding 	structure 	disclosed 	in 	the
specification 	and 	equivalents 	thereof, 	and 	the
corresponding structure is the algorithm." Harris
Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed.
Cir. 2005). The court in that case characterized the
rule 	of 	WMS 	Gaming 	as 	follows: 	"[Tlhe
corresponding structure for a 5 112 ¶ 6 claim for a
computer-implemented function is the algorithm
disclosed in the specification." 417 F.3d at 1249.
521 F.3d at 1333. In Aristocrat, the only portion of the specification that
described the structure corresponding to the three functions performed by
the claimed "game control means" was a statement that it is within the
capability of a worker in the art "to introduce the methodology on any
standard microprocessor base [sic] gaming machine by means of appropriate
programming." Id. at 1334. The court found that the reference to
"appropriate programming" imposed no limitation whatever, as any general
purpose computer must be programmed. Id. The court further found that
the language of claim 1 referring to "the game control means being arranged
to pay a prize when a predetermined combination of symbols is displayed in
a predetermined arrangement of symbol positions selected by a player"
simply describes the function to be performed and not the algorithm by
which it is performed. Id. The court further found that the language in
claim 1 that recites "defining a set of predetermined arrangements for a
7

Appeal 2007-3072
Application 091167,3 15
current game comprising each possible combination of the symbol position
selected by the player which have one and only one symbol position in each
column of the display means" is merely a mathematical expression that
describes the outcome of performing the function and not a means for
achieving that outcome. Id. The court also found that the figures and tables
in Aristocrat's patent, which provided examples of how player selections
translate to possible winning combinations, and the corresponding portion of
the written description, which contained mathematical descriptions of how
many winning combinations would be produced, are simply examples of the
results of the operation of an unspecified algorithm. Id. at 1335. Thus, the
court held that Aristocrat failed to disclose the algorithms that transform the
general purpose microprocessor to a special purpose computer programmed
to perform the disclosed algorithm. Id.
In two other recent cases, the Federal Circuit followed Aristocrat in
holding means-plus-function claims invalid for indefiniteness for lack of
sufficient description of algorithms to transform a general purpose computer
to a special purpose of computer under 35 U.S.C. 5 112, sixth paragraph.
See Finisar Corp. v. DirecTVGroup, Inc., 523 F.3d 1323, 1340-41 (Fed.
Cir. 2008) and Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir.
2008).
ANALYSIS
Independent claims 1 and 9 recite the step of providing, at a
merchant's web site, means for a consumer to participate in an earning

Appeal 2007-3072
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activity to earn value from a merchant. Claim 20 similarly recites the step of
providing, at a merchant's web site, means for a consumer to earn value,
conferred by said merchant, through an earning activity.
A presumption arises that the Appellants used the term "means" in
claims 1, 9, and 20 to invoke 35 U.S.C. 5 112, sixth paragraph. The function
recited in the first element of claims 1 and 9 is allowing a consumer to
participate in an earning activity to earn value from a merchant. The
function recited in the first element of claim 20 is allowing a consumer to
earn value, conferred by a merchant, through an earning activity. The claims
themselves do not recite any structure that would perform these claimed
functions in their entirety. As such, the presumption that 5 112, sixth
paragraph, applies, is not rebutted by any structure recited in the claims.'
Our rules require that the Appeal Brief contain:
For each independent claim involved in the appeal
and for each dependent claim argued separately
under the provisions of paragraph (c)(l)(vii) of this
section, every means plus function and step plus
function as permitted by 35 U.S.C. 5 	112, sixth
paragraph, must be identified and the structure,
material, or acts described in the specification as
corresponding to each claimed function must be
set forth with reference to the specification by page
and line number, and to the drawing, if any, by
2 If the first step of these method claims were found not to invoke 35 U.S.C.
5 112, sixth paragraph, then the step simply recites purely functional
language and would impermissibly cover every conceivable act for
achieving the claimed result, and the scope of the claimed step would not be
enabled under 35 U.S.C. 5 112, first paragraph.
9

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Application 091167,3 15
reference character.
37 C.F.R. 5 41.37(c)(l)(v). Thus, we consult the Appellants' Summary of
the Claimed Subject Matter in the Appeal Brief to assess whether the
Specification describes structure, material, or acts corresponding to the
functions recited in claims 1, 9, and 20.
The Appellants describe the subject matter of claim 1 in the Appeal
Brief as follows:
The method comprises the steps of providing, at a
merchant's web site, means (G, 	merchant's web
site, 	incentive 	program) 	for 	a 	consumer 	to
participate in an earning activity to earn value from
a merchant (see, e.g., page 9, lines 1-3). . ..
App. Br. 5.
The Appellants likewise cite to an "incentive program" and to page 9,
lines 1-3 of the Specification as support for the means element in the first
stepsofclaims9and20. App.Br. 6 a n d 7 .
The cited portion of the Appellants' Specification describes generally
that the consumer can access an earning activity through the merchant's web
site (Fact 1). The merchant's web site itself cannot be the means or structure
corresponding to the function of the claims, because the claims recite
providing "at a merchant's web site" means for a consumer to participate in
an earning activity and earn value. It is clear from the claims that the
merchant's web site is merely the location, through which the software that
enables the consumer to participate in the earning activity and earn value, is
provided. The Specification does not provide, however, an algorithm by

Appeal 2007-3072
Application 091167,3 15
which the consumer is able to participate in an earning activity and earn
value (Fact 2).
The Appellants also refer in the Appeal Brief generally to an
"incentive program" as the structure for allowing a consumer to participate
in an earning activity and earn value. This reference to an "incentive
program" is not accompanied in the Brief by a specific citation to the
Specification. Rather, the "incentive program" appears to refer to an
unspecified software program that would presumably enable a consumer to
participate in an earning activity and earn value. The Specification describes
in the Background of the Invention different types of incentive programs,
such as frequent flyer and "pointsv-based programs (Fact 3). This
description of prior art incentive programs merely provides examples of the
results of the operation of an unspecified algorithm (Fact 4).
In addition to the specific portion of the Specification identified by the
Appellants in the Appeal Brief, we have thoroughly reviewed the
Appellants' Specification and have not been able to locate an adequate
disclosure of structure, material, or acts corresponding to the functions of
allowing a consumer to participate in an earning activity and earn value from
an earning activity. In particular, the Specification does not disclose any
specific algorithm that could be implemented on a general purpose computer
to allow a consumer to participate in an earning activity and earn value from
an earning activity. Accordingly, the Specification fails to disclose the
algorithms that transform the general purpose processor to a special purpose

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computer programmed to perform the disclosed functions of the first
elements of claims 1, 9, and 20.
The Appellant has failed to disclose any algorithm, and thus has failed
to adequately describe sufficient structure, for performing the functions
recited in the means elements contained in the first step of claims 1, 9, and
20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and
claims 2-8, 11- 19, and 2 1-25 depending therefrom, are unpatentable under
35 U.S.C. 5 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at
1333.
We vacate the rejection of claims 1-25 under 5 103 as being
unpatentable over Eggleston and Wolff. A rejection of a claim, which is so
indefinite that "considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims" is needed, is
likely imprudent. 	See In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(holding that the examiner and the board were wrong in relying on what at
best were speculative assumptions as to the meaning of the claims and
basing a rejection under 35 U.S.C. 5 103 thereon.) We find it imprudent to
speculate as to the scope of the "means" elements of the first step of
independent claims 1, 9, and 20 in order to reach a decision on the
obviousness of the claimed subject matter under 5 103. It should be
understood, however, that our decision to vacate this rejection is based on
the indefiniteness of the claimed subject matter and does not reflect on the
merits of the underlying rejection.

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DECISION
The original Board decision entered May 2, 2008 is vacated, and the
request for rehearing is dismissed. We enter a new ground of rejection of
claims 1-25 under 35 U.S.C. 5 112, second paragraph. We vacate the
Examiner's rejection of claims 1-25 under 35 U.S.C. 5 103 as unpatentable
over Eggleston and Wolff.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
5 41.50(b) (2007). 37 C.F.R. 5 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review. "
37 C.F.R. 5 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. 	Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under 5 41.52 by the Board upon the same record. . . .

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
3 1.136(a)(l)(iv) (2007).
VACATED; 37 C.F.R. 6 41.50(b)
vsh
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