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[JustAnotherExaminer]

Is there case law that defines "structure or material" for 112 6th purposes?

The new(er) fed register guidelines for 112 6th examination state:

Often the supporting disclosure for a
computer-implemented invention
discusses the implementation of the
functionality of the invention through
hardware, software, or a combination of
both. In this situation, a question can
arise as to which mode of
implementation supports the means-plus-
function limitation. The language
of § 112, ¶ 6 requires that the recited
‘‘means’’ for performing the specified
function shall be construed to cover the
corresponding ‘‘structure or material’’
described in the specification and
equivalents thereof. Therefore, by
choosing to use a means-plus-function
limitation and invoke § 112, ¶ 6,
applicant limits that claim limitation to
the disclosed structure, i.e.,
implementation by hardware or the
combination of hardware and software,
and equivalents thereof. Therefore, the
examiner should not construe the
limitation as covering pure software
implementation.
However, if there is no corresponding
structure disclosed in the specification
(i.e., the limitation is only supported by
software and does not correspond to an
algorithm and the computer or
microprocessor programmed with the
algorithm), the limitation should be
deemed indefinite as discussed above,
and the claim should be rejected under
§ 112, ¶ 2. It is important to remember
that claims must be interpreted as a
whole; so, a claim that includes a
means-plus-function limitation that
corresponds to software per se (and is
thus indefinite for lacking structural
support in the specification) is not
necessarily directed as a whole to
software per se unless the claim lacks
other structural limitations.

Notice the complete lack of any citations.  There's an ongoing stigma at the PTO that the word "structure" for 112 6th purposes implies "physical structure."  Notice the new guidelines require disclosure of hardware or hardware/software combination.  A sole algorithm or software would not suffice as "structure".

I recently asked a QAS in 112 training for a citation or case law as to why sole software or algorithms could not be construed as "structure".  They referenced the fed register as the citation.

So I'm looking for a case that supports interpreting "structure or material supported by the specification" to be sole software/algorithm.

[khazzah]

Rhere's an ongoing stigma at the PTO that the word "structure" for 112 6th purposes implies "physical structure."  Notice the new guidelines require disclosure of hardware or hardware/software combination.  A sole algorithm or software would not suffice as "structure".
...

I don't quite understand your use of the term "sole" here ...

You mean that, according to the new guidelines, a spec that described software to perform a function, but failed to state that the software executed on a computer, would not meet 112P6?

[JustAnotherExaminer]

Correct. If you disclosed "a determination module is implemented via software and comprises code to perform the following steps: A, B, C".

And then claimed, an apparatus comprising:
a determination module for ....;
a calculating module for... .

The "determination module" would trigger a 112 2nd rejection for not being a combination of hardware/software (ie, it's only software), because it allegedly (according to the new guidelines) doesn't have "structure" disclosed in the spec.

[JustAnotherExaminer]

75 USPQ2d 1705
Harris Corp. v. Ericsson Inc.
U.S. Court of Appeals
Federal Circuit
Nos. 03-1625, -1626
Decided August 5, 2005
417 F3d 1241


pg 1714:
"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."

(in the court's summarizing of WMS Gaming decision)

[khazzah]

75 USPQ2d 1705
Harris Corp. v. Ericsson Inc.
U.S. Court of Appeals
Federal Circuit
Nos. 03-1625, -1626
Decided August 5, 2005
417 F3d 1241


pg 1714:
"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."

(in the court's summarizing of WMS Gaming decision)

Yeah, I was gonna point you to WMS Gaming, which takes the strange position that an algorithm is "structure" for purposes of 112P6. The PTO's position appears to be inconsistent with this case law.

[JustAnotherExaminer]

But WMS gaming doesn't say that.  In every instance of analyzing the structure they conclude it is "an algorithm executed by a computer/microprocessor".  That is, it's always tied to hardware. 

Harris seems to be inaccurately summarizing the WMS decision.

[khazzah]

But WMS gaming doesn't say that.  In every instance of analyzing the structure they conclude it is "an algorithm executed by a computer/microprocessor".  That is, it's always tied to hardware. 

Harris seems to be inaccurately summarizing the WMS decision.

I don't have the time to read WMS Gaming right now, but I am familiar with WMS Gaming and its progeny.

I'm certain that the analysis in WMS Gaming is only invoked when the function is performed by a computer/microprocessor. And that if 112P6 is invoked and the function is performed by a computer/microup and there is no algorithm, the claim is invalid.

But to me, that doesn't necessarily imply that the structure is an algorithm executed by a computer, rather than an algorithm. Furthermore, WMS Gaming didn't need to reach the specific question you posed (does the 112P6 "structure" map to an algorithm alone or an algorithm plus hardware) because a computer/microprocessor was clearly disclosed, and was clearly linked to the function.

So I'd have to read WMS Gaming before I agree with your statement that "in every instance of analyzing the structure [the court in WMS Gaming] concludes it is 'an algorithm executed by a computer/microprocessor'"."

[NJ Patent1]

Surprise, surprise.  Two panels don't agree?  OMG

[JimIvey]

Is there case law that defines "structure or material" for 112 6th purposes?

...

Notice the complete lack of any citations.  There's an ongoing stigma at the PTO that the word "structure" for 112 6th purposes implies "physical structure."  Notice the new guidelines require disclosure of hardware or hardware/software combination.  A sole algorithm or software would not suffice as "structure".

I recently asked a QAS in 112 training for a citation or case law as to why sole software or algorithms could not be construed as "structure".  They referenced the fed register as the citation.

So I'm looking for a case that supports interpreting "structure or material supported by the specification" to be sole software/algorithm.

Sorry for coming late to the party, but I was out-of-town for a bit.  We discussed this a bit in detail here:

Re: New Guidelines Re: 112 sixth paragraph

At that post, Karen introduced a recent decision that summarized the law re 112p6 applied to computer-implemented inventions at the time.

In essence (as I understand it), the "structure" in the spec is the "special-purpose" computer that results from configuring a "general-purpose" computer to perform the function/algorithm described.  The threshold for how much algorithmic detail is required to provide "structure" appears to be very low.  I think it's very helpful to dig up the patent at issue in WMS Gaming and read it.  You'll see that the spec said virtually no more than "the computer does all that."  In that context, the court seemed to be saying, "Jeez, toss us a bone!  Give us some structure, any structure!" 

Here's my understanding re failing to provide more details in the spec for the computer:

I claim: a device comprising: means for computing the speed of a vehicle.

That is more or less equivalent to:

I claim: a device comprising: the means for computing the speed of a vehicle that I've described above in the specification and any equivalents thereof.

So, go to the spec.  Find that it only says a computer does it and nothing else.  Now what?

In effect, I've claimed "a device comprising: a general-purpose computer."

If I've described more detail about the manner in which the computer computes the speed of a vehicle -- particularly the manner in which the computer is configured to compute the speed and thereby transformed into a special-purpose computer, the story is different. 

Of course, such a special-purpose computer might not be novel, but that's a different issue.  It's important to keep 102/103 separate from 112, 101, etc.

Regards.

[Evelin]

I am a little confused. There is no one can explain the specific ah?