Patent Law

Mixed Claim Types

By Gary Odom and Jordan Kuhn

Both the USPTO and the courts proscribe claims mixing statutory claim classes as both unpatentable subject matter under §101 and indefinite under §112 ¶2. But, as is often the case with claim construction, the line may seem fuzzy. Herein a guide.

The November 2005 IPXL Holdings v. Amazon CAFC ruling found claim 25 in the notorious Amazon 1-click patent (6,149,055) indefinite.

25. The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

The district court found that claim 25 is indefinite under 35 U.S.C. § 112, as it attempts to claim both a system and a method for using that system. Section 112, paragraph 2, requires that the claims of a patent "particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 (2000). A claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991).

The problem was that the claim could have been read either as a system claim or method claim.

Thus, it is unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction.

Xerox got both barrels in a non-precedential BPAI toss in 2005, just after the IPXL Holdings v. Amazon.com dustup.

MPEP 2173.05 appears at first glance Janus-like on the topic, but does split the hairs properly.

2173.05(p) Claim Directed to Product-By- Process or Product and Process [R-5]

There are many situations where claims are permissively drafted to include a reference to more than one statutory class of invention.

I.    PRODUCT-BY-PROCESS

A product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made, is proper. In re Luck, 476 F.2d 650, 177 USPQ 523 (CCPA 1973); In re Pilkington, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969); In re Steppan, 394 F.2d 1013, 156 USPQ 143 (CCPA 1967). A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process.

An applicant may present claims of varying scope even if it is necessary to describe the claimed product in product-by-process terms. Ex parte Pantzer, 176 USPQ 141 (Bd. App. 1972).

II.    PRODUCT AND PROCESS IN THE SAME CLAIM

A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph. IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).

Such claims may also be rejected under 35 U.S.C. 101 based on the theory that the claim is directed to neither a "process" nor a "machine," but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only. Id. at 1551.

MPEP 2106 IV. B. "Determine Whether the Claimed Invention Falls Within An Enumerated Statutory Category," in disclosing examination guidelines, skirts the issue, failing to give guidance as to how to determine a mixed-type claim. 2106 is best considered an aside to the subject.

For example, a claimed invention may be a combination of devices that appear to be directed to a machine and one or more steps of the functions performed by the machine. Such instances of mixed attributes, although potentially confusing as to which category of patentable subject matter the claim belongs, does not affect the analysis to be performed by USPTO personnel. Note that an apparatus claim with process steps is not classified as a "hybrid" claim; instead, it is simply an apparatus claim including functional limitations. See, e.g., R.A.C.C. Indus. v. Stun-Tech, Inc., 178 F.3d 1309 (Fed. Cir. 1998) (unpublished).

While nominally a claim preamble states the statutory class, preambles are only considered a limitation if substantial; most are not. Hence, a typical preamble carries little or no weight in claim construction. Analogously, this would be the same in determining whether a claim is an unstatutory mixed type.

The cutting edge for an unstatutory dual-matter claim is whether the claim could be reasonably read "either-or" - interpretable within two of the four categories of patentable subject matter: "process, machine, manufacture, or composition of matter" (35 U.S.C. §101). Another viewpoint would be to answer the question: what is crucial, specifically novel, about the claim that merits its patentability? If the answer lies in a different claim type than the claim nominally is, the claim is invalid.

Full post as published by The Patent Prospector on March 29, 2008 (boomark / email).