Patent Law

Ex parte Catlin (BPAI 2009)(precedential) fd073072.pdf.

The first-time around, the BPAI found some of Catlin's claims patentable. On rehearing (requested by the SPE), the BPAI reversed course - finding the means-plus-function claims indefinite under 35 USC § 112.

Catlin's claim one reads as follows:

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 Patent Act allows a patentee to claim inventive elements using "means plus function" language. A means plus function term is construed to cover the corresponding structures as described in the specification as well as any equivalents. This rule of construction means that seemingly broadly written means limitations are often quite limited in practice -- especially when the specification is not thoroughly drafted.

If no corresponding structure can be identified in the disclosure, then the claim will be found "invalid as indefinite."

Here, the claim recites a "means for a consumer to participate in an earning activity to earn value from a merchant." On rehearing, the BPAI could not find any corresponding structure in the specification. In particular, the Board was looking for an algorithm for performing the claimed function.

[W]e 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.

Holding: Claims indefinite.