Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 1 of 48 PageID 219
`
`Exhibit
`C
`
`
`
`
`
`Exhibit
`C
`
`
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 2 of 48 PageID 220
`PRECEDENTIAL OPINION
`
`Pursuant to Board of Patent Appeals and
`Interferences Standard Operating Procedure 2.
`the opinion below has been designated a
`precedenti al opinion.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`Ex parte ANDREA J. RODRIGUEZ, STEVEN R. EDWARDS,
`CHRISTOPHER M. GILES, and RANDY S. MILLER
`
`Appeal 2008-000693
`Application 1011 32,492
`Technology Center 2 100
`
`Decided: October 1,2009
`
`Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
`JAMES T. MOORE and ALLEN R. MACDONALD, Vice Chief
`Administrative Patent Judges, HOWARD B. BLANKENSHIP,
`LINDA E. HORNER, JAY P. LUCAS, and ST. JOHN COURTENAY 111,
`Administrative Patent Judges.
`
`MACDONALD, Vice Chief Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`1 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 ."
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 3 of 48 PageID 221
`
`Appeal 2008-000693
`Application 1011 32,492
`
`I. SUMMARY OF THE DECISION
`
`We reverse the decision of the Examiner finally rejecting claims 1-4
`
`and 6-20.
`
`Specifically, we reverse the Examiner's rejections of apparatus claims
`1-4, 6-10, 19, and 20, under 35 U.S.C. 5 102(b) on the basis that these
`claims are indefinite. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). We
`
`also reverse the Examiner's rejection of method claims 11-17 and computer
`readable medium claim 18 under 35 U.S.C. 5 102(b).
`However, we enter new grounds of rejection as to all pending claims
`pursuant to our authority under 37 C.F.R. 5 41.50(b). By rule, this panel has
`discretion to add one or more new grounds of rejection.
`
`Should the Board have knowledge of any grounds not involved
`in the appeal for rejecting any pending claim, it may include in
`its opinion a statement to that effect with its reasons for so
`holding, which statement constitutes a new ground of rejection
`of the claim.
`37 C.F.R. 5 41.50(b) (emphasis added). The rule is permissive and merely
`provides the Board panel the option of making a new ground of rejection.
`
`Making a new ground of rejection is therefore an exercise of discretion made
`
`solely at the option of the panel and is not a mandatory requirement. In the
`
`opinion that follows, we have chosen to enter only the following new
`
`grounds of rejection.
`
`We enter a new ground of rejection of means-plus-function claim 10
`under 35 U.S.C. 5 112, second paragraph, on the same basis set forth in
`Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed.
`
`Cir. 2008).
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 4 of 48 PageID 222
`
`Appeal 2008-000693
`Application 1011 32,492
`
`We enter a new ground of rejection of apparatus claims 1-4, 6-9, 19,
`and 20, under 35 U.S.C. 5 112, on the same basis set forth in Aristocrat.
`We also enter an alternative new ground of rejection of apparatus
`claims 1-4, 6-9, 19, and 20, under 35 U.S.C. 5 112, first paragraph, on
`essentially the same basis as set forth in Exparte Miyazaki, 89 USPQ2d
`
`1207 (BPAI 2008) (precedential).
`
`We enter a new ground of rejection of method claims 11- 17 and
`computer readable medium claim 18 under 35 U.S.C. 5 112, first paragraph,
`for lack of enablement, based on an undue experimentation analysis using all
`
`of the Wands factors.
`
`11. STATEMENT OF CASE
`
`Introduction
`Appellants appeal under 35 U.S.C. 5 134 from a final rejection of
`claims 1-4 and 6-20. We have jurisdiction under 35 U.S.C. 5 6(b).
`Claim 5 has been cancelled.
`
`According to Appellants, the invention relates to a first apparatus, a
`
`second apparatus, a method, and a computer readable medium to
`
`(a) generate a random system configuration file of a structurally variable and
`
`complex system; (b) build a system level netlist in response to the random
`
`system configuration file; (c) verify the structurally variable and complex
`
`system in response to the system level netlist; and (d) provide automatic
`
`random verification of the system in response to the random system
`
`configuration file. (Abstract).
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 5 of 48 PageID 223
`
`Appeal 2008-000693
`Application 1011 32,492
`
`Exemplary Claims
`
`Exemplary claims 1, 10, 1 1, and 18, read as follows:
`
`1.
`
`An apparatus comprising:
`a system configuration generator configured to generate a
`random system configuration file of a structurally variable and
`complex system;
`a system builder configured to (i) build a system level netlist
`and (ii) generate system parameters in response to said random system
`configuration file; and
`a simulation verification environment configured to verify said
`structurally variable and complex system in response to said system
`level netlist, wherein said simulation verification environment is
`configured to provide automatic random verification of said
`structurally variable and complex system in response to said random
`system configuration file.
`
`10. An apparatus comprising:
`means for generating a random system configuration file of a
`structurally variable and complex system;
`means for (i) building a system level netlist and (ii) generating
`system parameters in response to said random system configuration
`file;
`
`means for verifying said structurally variable and complex
`system in response to said system level netlist; and
`means for providing automatic random verification of said
`structurally variable and complex system in response to said system
`configuration file.
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 6 of 48 PageID 224
`
`Appeal 2008-000693
`Application 1011 32,492
`
`11. A method for automated random verification of structurally
`variable and complex systems, comprising the steps of:
`(A) generating a random system configuration file of said
`system;
`(B) generating one or more parameters of said system in
`response to said random system configuration file;
`(C) generating a system level netlist of said system in response
`to said random system configuration file;
`(D) verifying one or more target modules with said system in
`response to said system level netlist; and
`(E) automatically and randomly adjusting step (D) in response
`to said random system configuration file.
`
`18. A computer readable medium configured to perform the steps
`(A), (B), (C) and (D) of claim 11.
`
`The prior art relied upon by the Examiner in rejecting the claims on
`
`Prior Art
`
`appeal is:
`
`Me yer
`
`US 6,076,180
`
`Jun. 13, 2000
`
`Rejection on Appeal
`The Examiner rejected claims 1-4 and 6-20 under 35 U.S.C. 5 102(b)
`as being anticipated by ~ e ~ e r . ~
`
`2 Although both the final rejection and Examiner's Answer discuss a
`rejection of claim 5, we note that claim 5 was cancelled in the amendment
`filed January 17, 2006. Therefore, claim 5 is not before us in this appeal.
`Also, we note that the Examiner has withdrawn the rejection of claim 19
`under 35 U.S.C. 5 112, second paragraph, as being indefinite. (Ans. 9,
`11. 2-3).
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 7 of 48 PageID 225
`
`Appeal 2008-000693
`Application 1011 32,492
`
`Examiner's Findings
`
`The Examiner found that each limitation of claims 1-4 and 6-20 was
`described in Meyer. (Final Rej . 4- 1 I).'
`
`Appellants' Contentions
`
`Appellants contend that the Examiner erred in rejecting claims 1-4
`and 6-20 under 35 U.S.C. 5 102(b) because Meyer fails to describe an
`element, means, or step for performing building (or generating) a system
`
`level netlist in response to a random system configuration file as is required
`
`by all the claims (App. Br. 7-10).
`
`111. ISSUES
`
`A. Issues on Appeal
`
`Whether Appellants have shown that the Examiner has erred because
`
`Meyer does not teach the limitation of building (or generating) a system
`
`level netlist in response to a random system configuration file required by
`
`claims 1-4 and 6-20?
`
`3 The Examiner's Answer repeats these rejections, but mistakenly labels
`each of the fifteen rejections of claims 6-20 as rejections of claims 5-19
`respectively.
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 8 of 48 PageID 226
`
`Appeal 2008-000693
`Application 1011 32,492
`
`B. Additional Issues Raised by the Pending Claims
`And Addressed in New Grounds of Rejection
`
`(1)
`Apparatus Claims
`
`Whether apparatus claim 10, which is in means-plus-function format,
`is definite under 35 U.S.C. 5 112, second paragraph if a means is not
`supported by corresponding structure in the specification?
`
`Whether apparatus claims 1-4, 6-9, 19, and 20, if construed as being
`in means-plus-function format, are definite under 35 U.S.C. 5 112, second
`paragraph if a means is not supported by corresponding structure in the
`
`specification?
`Whether apparatus claims 1-4, 6-9, 19, and 20, if construed as not
`being in means-plus-function format, violate the rule set forth in Halliburton
`
`Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), because the claims
`
`include functional elements which are not limited by the application of 35
`U.S.C. 5 112, sixth paragraph and do not contain any additional recitation of
`structure, so that claims 1-4, 6-9, 19, and 20 are not enabled under
`35 U.S.C. 5 112, first paragraph, for the scope of the claims?
`
`(2)
`Method Claims
`
`Whether method claims 11-17 are unpatentable under 35 U.S.C.
`5 112, first paragraph, as not being enabled for the scope of the claims?
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 9 of 48 PageID 227
`
`Appeal 2008-000693
`Application 1011 32,492
`
`(3)
`Computer Readable Medium Claim
`Whether method claim 18 is unpatentable under 35 U.S.C. 5 112, first
`paragraph, as not being enabled for the scope of the claim?
`
`IV. FINDINGS OF FACT
`
`The following Findings of Fact (FF) are shown by 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).
`
`Appellants' Admissions
`
`1.
`
`According to Appellants:
`
`Conventional random verification methods manually
`generate a limited number of systems and run customized
`stimuli through each of the systems.
`(Spec. 1,ll. 16-18).
`
`2.
`
`Also according to Appellants:
`
`[Sluch approaches are not efficient for complex and variable
`system verification.
`(Spec. 1,ll. 18-19).
`
`3.
`
`Further according to Appellants:
`
`In complex and structurally variable systems a high
`number of possible combinations of system structures,
`configurations, stimuli, and responses are present. Conventional
`random verification systems do not adequately cover the vast
`range of possible system conditions. It is impractical to test an
`adequate portion of such combinations using conventional
`approaches.
`(Spec. 2,ll. 1-7).
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 10 of 48 PageID 228
`
`Appeal 2008-000693
`Application 1011 32,492
`
`Appellants' Invention
`
`4.
`
`According to Appellants, "[tlhe present invention concerns an
`
`apparatus comprising a system configuration generator, a system builder and
`
`a simulation verification environment." (Spec. 2,ll. 14-16).
`
`5.
`
`"The system builder may be configured to build a system level
`
`netlist in response to the random system configuration file." (Spec. 2,
`
`6.
`
`Referring to FIG. 1, a block diagram of a circuit (or system)
`
`100 is shown in accordance with a preferred embodiment of the present
`
`invention. The system 100 is shown comprising a system builder block (or
`
`circuit) 104. (Spec. 4,ll. 5-7 and 12-14).
`
`7.
`
`Appellants state:
`
`The system builder block 104 may have an input 114 that
`may receive the signal SCF and an output 116 that may present
`a number of signals (e.g., SLN and SP). The signal SLN may be
`a system level netlist. The signal SP may be system parameters.
`The parameters SP may represent specific system parameters
`according to a particular configuration of the variable and
`complex system under test as indicated by the SCF.
`(Spec. 5,ll. 3-9).
`
`8.
`
`Appellants state:
`
`The system builder block 104 may generate the system level
`netlist SLN and the system parameters SP of the system
`described by the system configuration file SCF. The system
`level netlist SLN and the system parameters SP may then be
`presented to the SVE 106.
`(Spec. 9,ll. 3-7).
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 11 of 48 PageID 229
`
`Appeal 2008-000693
`Application 1011 32,492
`
`9.
`
`"Referring to FIG. 3, an [sic] process (or method) 200
`
`illustrating an operation of the system 100 is shown." (Spec. 10,ll. 8-9).
`
`10. Appellants state:
`
`While in the state 208, the process 200 may receive a high-level
`system file and a verification test file (e.g., the system builder
`104 may receive the file SCF). While in the state 210, the
`process 200 may build a detailed configuration file using the
`high-level system configuration file and component pinout
`(e.g., the system builder 104 may generate the netlist SLN and
`the system parameters SP).
`(Spec. 10,l. 18, through Spec. 11,l. 3).
`
`1 1. Appellants state:
`
`The function performed by the system 100 of FIGS. 1, 2
`and 3 may be implemented using a conventional general
`purpose digital computer programmed according to the
`teachings of the present specification, as will be apparent to
`those skilled in the relevant art(s).
`(Spec. 12,l. 18, through Spec. 13,l. 1).
`
`12. Further, Appellants state:
`
`Appropriate software coding can readily be prepared by skilled
`programmers based on the teachings of the present disclosure,
`as will also be apparent to those skilled in the relevant art(s).
`(Spec. 13,ll. 1-4).
`
`13. Appellants state:
`
`The present invention thus may also include a computer
`product which may be a storage medium including instructions
`which can be used to program a computer to perform a process
`in accordance with the present invention. The storage medium
`can include, but is not limited to, any type of disk including
`floppy disk, optical disk, CD-ROM, and magneto optical disks,
`ROMs, RAMS, EPROMs, EEPROMs, Flash memory, magnetic
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 12 of 48 PageID 230
`
`Appeal 2008-000693
`Application 1011 32,492
`
`or optical cards, or any type of media suitable for storing
`electronic instructions.
`(Spec. 13,ll. 10-17).
`
`V. APPARATUS CLAIM 10 - NEW GROUNDS OF REJECTION
`
`A. Rejection of Apparatus Claim 10
`Under 35 U.S.C. § 112, Second Paragraph
`
`(1)
`Introduction
`Using our authority under 37 C.F.R. 5 41.50(b), we reject apparatus
`claim 10 under 35 U.S.C. 5 1 12, second paragraph, as being indefinite.
`
`(2)
`Principles Of Law
`
`( 4
`Claim Construction
`
`During prosecution, "the PTO gives claims their 'broadest reasonable
`
`interpretation."' In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
`
`In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
`
`The USPTO is not required in the course of prosecution to interpret
`
`claims in the same manner as courts are required to during infringement
`
`proceedings.
`
`It would be inconsistent with the role assigned to the
`PTO in issuing a patent to require it to interpret claims in the
`same manner as judges who, post-issuance, operate under the
`assumption the patent is valid.
`
`In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.1997).
`
`The question then is whether the PTO's interpretation of the disputed
`
`claim language is "reasonable." Id. at 1055.
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 13 of 48 PageID 231
`
`Appeal 2008-000693
`Application 1011 32,492
`
`(b)
`35 U.S.C. 112
`
`It has long been understood that a patent must describe the
`exact scope of an invention and its manufacture to 'secure to
`[the patentee] all to which he is entitled, [and] to apprise the
`public of what is still open to them.' McClain v. Ortrnayer, 141
`U.S. 419,424, 12 S.Ct. 76,77, 35 L.Ed. 800 (1891). Under the
`modern American system, these objectives are served by two
`distinct elements of a patent document. First, it contains a
`specification describing the invention "in such full, clear,
`concise, and exact terms as to enable any person skilled in the
`art ... to make and use the same." 35 U.S.C. 5 112. Second, a
`patent includes one or more "claims," which "particularly
`poin[t] out and distinctly clai[m] the subject matter which the
`applicant regards as his invention." 35 U.S.C. 5 112.
`Markrnan v. Westview Instruments, Znc., 5 17 U.S. 370, 373 (1996) (citation
`
`omitted).
`
`( 4
`35 U.S.C. § 112, Second Paragraph
`The test for definiteness under 35 U.S.C. 5 112, second paragraph, is
`whether "those skilled in the art would understand what is claimed when the
`
`claim is read in light of the specification." Orthokinetics, Znc. v. Safety
`
`Travel Chairs, Znc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
`
`omitted).
`
`(dl
`35 U.S. C. § 112, Sixth Paragraph
`
`An element in a claim for a combination may be
`expressed as a means or step for performing a specified
`function without the recital of structure, material, or acts in
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 14 of 48 PageID 232
`
`Appeal 2008-000693
`Application 1011 32,492
`
`support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the
`specification and equivalents thereof.
`35 U.S.C. 5 112, sixth paragraph.
`The sixth paragraph of 35 U.S.C. 5 112 has just as much application
`during proceedings before the U.S. Patent and Trademark Office as it does
`
`in district court cases for infringement matters. In re Donaldson Co., 16
`
`F.3d 1189, 1193 (Fed. Cir. 1994) (in banc).
`
`It is necessary to decide on an element by element basis whether 35
`U.S.C. 5 112, sixth paragraph, applies. Not all terms in a means-plus-
`function or step-plus-function clause are limited to what is disclosed in the
`written description and equivalents thereof, since 35 U.S.C. 5 112, sixth
`paragraph, applies only to the interpretation of the means or step that
`
`performs the recited function. See, e.g., ZMS Technology Znc. v. Haas
`
`Automation Znc., 206 F.3d 1422 (Fed. Cir. 2000) (the term "data block" in
`
`the phrase "means to sequentially display data block inquiries" was not the
`
`means that caused the sequential display, and its meaning was not limited to
`
`the disclosed embodiment and equivalents thereof.).
`
`"An element of a claim described as a means for performing a
`
`function, if read literally, would encompass any means for performing the
`
`function. But section 112 ¶ 6 operates to cut back on the types of means
`
`which could literally satisfy the claim language." Johnston v. ZVAC Corp.,
`
`885 F.2d 1574, 1580 (Fed. Cir. 1989) (citations omitted).
`
`"Properly understood section 112 ¶ 6 operates more like the reverse
`
`doctrine of equivalents than the doctrine of equivalents because it restricts
`
`the scope of the literal claim language." Id.
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 15 of 48 PageID 233
`
`Appeal 2008-000693
`Application 1011 32,492
`
`"[Tlhe 'broadest reasonable interpretation' that an examiner may give
`
`means-plus-function [or step-plus-function] language is that statutorily
`
`mandated in paragraph six." In re Donaldson Co., 16 F.3d at 1194-95.
`
`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, Znc. v. Syrnantec 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.
`
`As the court set forth in LG Electronics:
`
`" '[A] claim term that does not use 'means' will trigger the
`rebuttable presumption that 5 112 ¶ 6 does not apply.' "
`This presumption can be rebutted "by showing that the
`claim element recite[s] a function without reciting
`sufficient structure for performing that function."
`LG Electronics, Znc. v. Bizcorn Electronics, Znc., 453 F.3d 1364, 1372
`
`(Fed. Cir. 2006) (citations omitted).
`This presumption that 5 112 ¶ 6 does not apply is overcome when
`there is "no structural context for determining the characteristics of the
`
`[claim element] other than to describe its function." Welker Bearing Co. v.
`
`PHD, Znc. 550 F.3d 1090, 1096 (Fed. Cir. 2008). For example, "the
`
`unadorned term 'mechanism' is 'simply a nonce word or a verbal construct
`
`that is not recognized as the name of structure and is simply a substitute for
`the term 'means for.' ' " Id. (quoting Lighting World, Znc. v. Birchwood
`
`Lighting, Znc., 382 F.3d 1354, 1360 (Fed. Cir. 2004)).
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 16 of 48 PageID 234
`
`Appeal 2008-000693
`Application 1011 32,492
`
`(el
`Aristocrat
`
`Recently in Aristocrat, 521 F.3d 1328, the court set forth that for a
`
`claim to a programmed computer, a particular algorithm may be the
`corresponding structure under 5 1 12, 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 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.
`
`Id. at 1333. The court went on to point out:
`
`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 computer, but rather the special purpose computer
`programmed to perform the disclosed algorithm." [WMS
`Gaming, Inc. v. International Game Technology, 184 F.3d
`1339, 1349 (Fed. Cir. 1999).]
`
`Id.
`
`Id.
`
`The court in [Harris Corp.] 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." [Harris Corp. v. Ericsson Inc.,
`417 F.3d 1241, 1249 (Fed. Cir. 2005).]
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 17 of 48 PageID 235
`
`Appeal 2008-000693
`Application 1011 32,492
`
`In Aristocrat, the court found that a mere reference to using
`
`"appropriate programming" imposed no limitation whatever on the structure
`
`corresponding to the three functions performed by the claimed "game
`
`control means", as any general purpose computer must be programmed. Id.
`
`at 1334. 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 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.
`
`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. at 1335.
`
`See also Exparte Catlin, 90 USPQ2d 1603 (BPAI 2009) (precedential).
`
`(0
`Blackboard
`
`In Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir.
`
`2009), the court repeated its Aristocrat concerns with respect to the failure to
`provide a corresponding structure required under 5 112, sixth paragraph:
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 18 of 48 PageID 236
`
`Appeal 2008-000693
`Application 1011 32,492
`
`That ordinarily skilled artisans could carry out the recited
`function in a variety of ways is precisely why claims written in
`"means-plus-function" form must disclose the particular
`structure that is used to perform the recited function. By failing
`to describe the means by which the access control manager will
`create an access control list, Blackboard has attempted to
`capture any possible means for achieving that end. Section 112,
`paragraph 6, is intended to prevent such pure functional
`claiming. Aristocrat, 521 F.3d at 1333.
`
`Blackboard, 574 F.3d at 1385.
`
`(3)
`§ 112(2) Rejection of Claim 10
`
`Independent claim 10 recites four means plus function elements. A
`
`presumption arises that the Appellants used the term "means" in claim 10 to
`invoke 35 U.S.C. 5 112, sixth paragraph.
`The functions recited in the elements of claim 10 are "generating a
`
`random system configuration file of a structurally variable and complex
`
`system," "(i) building a system level netlist and (ii) generating system
`
`parameters in response to said random system configuration file," "verifying
`
`said structurally variable and complex system in response to said system
`
`level netlist," and "providing automatic random verification of said
`
`structurally variable and complex system in response to said system
`
`configuration file." Claim 10 does 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 structure recited in the
`claim.
`
`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
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 19 of 48 PageID 237
`
`Appeal 2008-000693
`Application 1011 32,492
`
`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 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 claim 10.
`
`The Appellants describe the subject matter of claim 10 as follows:
`
`A second embodiment of the present invention (as
`represented by claim 10) concerns an apparatus comprising the
`means for generating a system configuration file (102) of a
`structurally variable and complex system; means for building a
`system level netlist (104) in response to the random system
`configuration file (SCF); means for verifying the structurally
`variable and complex system (e.g., page 4, lines 5- 1 1) in
`response to said system level netlist (SLN); and means for
`providing automatic random verification of the structurally
`variable and complex system in response to the system
`configuration file.
`(App. Br. 4-5).
`
`The cited portion of the Appellants' Specification describes generally
`
`that the system 100 may provide automated random verification of complex
`
`and structurally variable systems. However, the cited portion of the
`
`Specification does not provide an algorithm by which the system is able to
`
`perform the functions recited in claim 10 to provide automated random
`
`verification of complex and structurally variable systems.
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 20 of 48 PageID 238
`
`Appeal 2008-000693
`Application 1011 32,492
`
`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
`c 6 generating," "building and generating," "verifying," and "providing" as
`
`recited in claim 10. In particular, the Specification does not disclose any
`
`specific algorithm that could be implemented on a general purpose computer
`
`to provide automated random verification of complex and structurally
`
`variable systems. Exemplary of this is Appellants' lack of disclosure of how
`
`to implement the "building and generating" functions. (See FFs 5-8 and 10).
`
`Similar to the "appropriate programming" discussed in Aristocrat, 521 F.3d
`
`at 1334, Appellants merely indicate that "[alppropriate software coding can
`
`readily be prepared by skilled programmers" (FF 12). Accordingly, the
`
`Specification fails to disclose the algorithms that transform the general
`
`purpose processor to a special purpose computer programmed to perform the
`
`disclosed functions of the elements of claim 10.
`
`The Appellants have failed to disclose any algorithm, and thus have
`
`failed to adequately describe sufficient structure, for performing the
`
`functions recited in the means elements contained in claim 10 so as to render
`
`the claim definite. Accordingly, claim 10 is unpatentable under 35 U.S.C.
`5 1 12, second paragraph, as indefinite. Aristocrat, 521 F.3d at 1333.
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 21 of 48 PageID 239
`
`Appeal 2008-000693
`Application 1011 32,492
`
`VI. APPARATUS CLAIMS 1-4,6-9,19, AND 20
`- NEW GROUNDS OF REJECTION
`
`A. Rejection of Apparatus Claims 1-4, 6-9, 19, and 20,
`Under 35 U.S.C. § 112, Second Paragraph
`
`(1)
`Introduction
`Using our authority under 37 C.F.R. 5 41.50(b), we reject apparatus
`claims 1-4, 6-9, 19, and 20, under 35 U.S.C. 5 112, second paragraph, as
`being indefinite.
`
`(2)
`§ 112(2) Rejection of Claims 1-4, 6-9, 19, and 20
`
`( 4
`Claim Construction
`
`Independent claim 1 (and dependent claims 2-4,6-9, 19, and 20)
`
`contains no elements which Appellants have identified in the Appeal Brief
`
`as being a "means plus function." Such identification is required by
`37 C.F.R. 5 41.37(c)(l)(v). Thus, Appellants have in effect indicated that
`claims 1-4, 6-9, 19, and 20 are not intended to contain any "means plus
`
`function" elements despite the format of any individual claim element.
`
`The three elements of claim 1 are a "system configuration generator
`
`configured to generate a random system configuration file of a structurally
`
`variable and complex system," "system builder configured to (i) build a
`
`system level netlist and (ii) generate system parameters," and "simulation
`
`verification environment configured to verify said structurally variable and
`
`complex system in response to said system level netlist" respectively. Here,
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-4 Filed 01/07/13 Page 22 of 48 PageID 240
`
`Appeal 2008-000693
`Application 1011 32,492
`
`each of the claim elements begins with a term followed by functional
`
`language. We agree that the claim elements do not use the term "means"
`
`which would normally indicate that the claim element is intended to be a
`
`"means plus function" element. This absence of the term "means" triggers a
`rebuttable presumption that 5 112 ¶ 6 does not apply.
`However, this does not end our claim construction analysis as to these
`
`claim terms, i.e., "system configuration generator," "system builder," and
`
`"simulation verification environment." We must determine "whether the
`
`term is one that is understood to describe structure, as opposed to a term that
`
`is simply a nonce word or a verbal construct that is not recognized as the
`name of structure and is simply a substitute for the term 'means for.' "
`
`Lighting World, 382 F.3d at 1360. As the Federal Circuit stated in Lighting
`
`World:
`
`In Greenberg and subsequent cases, we have looked to
`the dictionary to determine if a disputed term has achieved
`recognition as a nou
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
