Ex Parte Biebesheimer et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10388277 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEBRA L. BIEBESHEIMER,
DONN P. JASURA,
NEAL M. KELLER,
JUHNYOUNG LEE, and
STEVE J. ROLANDO
____________
Appeal 2009-003383
Application 10/388,277
Technology Center 3600
____________
Decided: April 26, 2010
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
The Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(3) (2007) on November 30, 2009 of the Decision on Appeal
September 29, 2009. In so doing, the Board affirmed the rejection of claims
1, 5-14 under 35 U.S.C. § 102(e) as being anticipated by Reisman, and
claims 2-4 under 35 U.S.C. § 103(a) as being unpatentable over Reisman in
view of Robarts.
In the Request for Rehearing, the Appellants argued the following:
[1.]…since the Board's Decision found it necessary
to rely on facts and to rely on arguments, not
present in the Final Rejection or Answer, based on
those facts it, in Appellants' view, this necessarily
means that the Examiner in the Final Action and
Answer did not make out a prima facie case of
anticipation under 35 USC 102(e). If the facts
relied on by the Examiner n the Final Rejection or
Answer made out a prima facie case of
anticipation, the Board's Decision would not have
had to rely on facts and arguments not relied on by
the Examiner. Thus the Board's Decision in
sustaining the Examiner's 35 USC 102(e)
rejections by relying on new facts and arguments is
equivalent to withdrawing the Final Rejection and
introducing a new 35 USC 102(e) rejection.
(Request 3-4).

[2.] Appellants in a Request for Rehearing should
not be required to respond to new facts an
arguments even if they are sustaining the same
rejections appealed, Appellants request that their
Request that Prosecution be reopened be granted
so that Appellants can introduce new facts,
arguments and amendments in rebuttal to the new
facts and arguments presented in the Board's
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Decision.
(Request 4-5).

[3.] It is Appellants position that the reliance: of'
the Board's Decision on facts and arguments not
relied on by tile Final Action and Answer
necessarily means that the reasons given by the
Examiner in the Final Rejection and Answer are
necessarily an error. If it were not an error, the
Board's Decision would not. Have to rely on .facts
and arguments not relied on by the Examiner. It is
Appellants’ position that the since the Board's
Decision had to rely on facts and arguments not
relied on by the Examiner, Appellants argument
must necessarily have overcome the reasons given
by the Examiner in the Final Rejection and Answer
in support or the 35 USC 102(e) and 103(a)
rejections. Thus based only on the Examiner's
argument in the Final Rejection and Answer
Appellants should win this appeal.
(Request 5).

We have reviewed the Request for Reconsideration. We modify our
position as follows:
We vacate our affirmance of the following rejections:
The rejection of claims 1 and 5-14 under §102(e) over Reisman; and
The rejection of claims 2-4 under §103 over Reisman and Robarts.

Claims 1 and 5-10.
As further explained below, we will enter a new ground of rejection of
claims 1-4, and 6 under 35 U.S.C. § 112, first paragraph as failing to meet
the enablement requirement. Our decision in this regard is based solely on
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the enablement deficiency and does not reflect on the adequacy of the prior
art evidence applied in support of the rejection.
As further explained below, we will enter a new ground of rejection of
claims 5 and 7-10 under 35 U.S.C. § 112, second paragraph as failing to
particularly point out and distinctly claim the subject matter which
applicants regard as the invention. Therefore, the rejection over prior art
must fall, pro forma, as being necessarily based on speculative assumptions
as to the scope of this claim. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). Our decision in this regard is based solely on the indefiniteness of
the subject matter and does not reflect on the adequacy of the prior art
evidence applied in support of the rejection.
Claims 11-14
As further explained below, we will enter a new ground of rejection of
claims 11-14 under 35 U.S.C. § 112, second paragraph, because they are
indefinite. Therefore, the rejection over prior art must fall, pro forma, as
being necessarily based on speculative assumptions as to the scope of this
claim. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Our decision
in this regard is based solely on the indefiniteness of the subject matter and
does not reflect on the adequacy of the prior art evidence applied in support
of the rejection.

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PRINCIPLES OF LAW
35 U.S.C. Section 112, Paragraph Six
When statutory interpretation is at issue, the plain and
unambiguous meaning of a statute prevails in the absence of clearly
expressed legislative intent to the contrary. See Mansell v. Mansell,
490 U.S. 581, 592, (1989); Hoechst Aktiengesellschaft v. Quigg, 917
F.2d 522, 526, 16 USPQ2d 1549, 1552 (Fed.Cir. (1990). The statutory
language at issue in this case reads:
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 support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof. [Emphasis ours.]
35 U.S.C. Section 112, Paragraph Six (1988).
The plain and unambiguous meaning of paragraph six is that
one construing means-plus-function language in a claim must look to
the specification and interpret that language in light of the
corresponding structure, material, or acts described therein, and
equivalents thereof, to the extent that the specification provides such
disclosure. Paragraph six does not state or even suggest that the PTO
is exempt from this mandate, and there is no legislative history
indicating that Congress intended that the PTO should be.
In re Donaldson 16 F3d 1189, 1194 (Fed. Cir. 1994).
Construing means-plus-function language, in accordance with 35
U.S.C. § 112, paragraph 6, is a burden that falls initially on the Office. The
record should include a claim construction analysis. Claim construction is
an important preliminary step in any analysis to determine whether subject
matter claimed would have been obvious to one of ordinary skill in the art at
the time of the invention.
Analysis begins with a key legal question - what is the invention
claimed? Courts are required to view the claimed invention as a
whole. 35 U.S.C. § 103. Claim interpretation, in light of the
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specification, claim language, other claims, and prosecution
history, is a matter of law and will normally control the
remainder of the decisional process.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed.
Cir. 1987).
A claim limitation that includes the term “means” is presumed to be
intended to invoke means-plus-function treatment, i.e., treatment under 35
U.S.C. §112, 6th paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302 (Fed. Cir. 1999) (“presumed an applicant advisedly used the
word “means” to invoke the statutory mandates for means-plus-function
clauses.”).
When no structure is described in the Specification to support a
means-plus-function limitation in a claim, the disclosure is inadequate to
explain to one of ordinary skill in the art what is meant by the claim
language. In such a situation, a means-plus-function claim would not be
amenable to construction and thus would fail to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112.
"[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112." In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc).
…. This duty to link or associate structure to function is the
quid pro quo for the convenience of employing § 112, ¶ 6. See
O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir.
1997). "Fulfillment of the § 112, ¶ 6 trade-off cannot be
satisfied when there is a total omission of structure." Atmel, 198
F.3d at 1382. While corresponding structure need not include
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all things necessary to enable the claimed invention to work, it
must include all structure that actually performs the recited
function. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
296 F.3d 1106, 1119 (Fed.Cir.2002).
Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1298 (Fed. Cir. 2005).
Mechanism For Language
“[T]he '254 patent's claim language does not include the
word “means,” but instead the similar word “mechanism.” This
court has had several prior occasions to consider the
applicability of means-plus-function treatment in the context of
the claim term “mechanism.” In Massachusetts Institute Of
Technology v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir.
2006) (“MIT”), this court considered the applicability of
means-plus-function treatment to the term “colorant selection
mechanism.” This court noted that “[t]he generic terms
'mechanism,' 'means,' 'element,' and 'device,' typically do not
connote sufficiently definite structure [to avoid means-plus-
function treatment] … The term 'mechanism' standing alone
connotes no more structure than the term 'means.'” Id.
(emphasis added).
Welker Bearing Co. v. PHD Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008).
Construing means-plus-function claim language
Construing means-plus-function claim language in accordance with
35 U.S.C. § 112, paragraph 6, is a two step process.
The first step in construing a means-plus-function claim
limitation is to define the particular function of the claim limitation.
Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed.Cir.2001).
“The court must construe the function of a means-plus-function
limitation to include the limitations contained in the claim language,
and only those limitations.” Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002). Thus, according to
the language of claim 11, the function of the “horizontal drive means”
is “rotating said lamp unit in a horizontal direction.” Ordinary
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principles of claim construction govern interpretation of this claim
language, see id., and, for all the reasons discussed in the preceding
two sections, we construe this function according to its ordinary
meaning as not requiring rotation through 360°.
The next step in construing a means-plus-function claim
limitation is to look to the specification and identify the corresponding
structure for that function. “Under this second step, ‘structure
disclosed in the specification is “corresponding” structure only if the
specification or prosecution history clearly links or associates that
structure to the function recited in the claim.’ ” Med. Instrumentation
& Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210
(Fed.Cir.2003) (quoting B. Braun Med. Inc. v. Abbott Labs., 124 F.3d
1419, 1424 (Fed.Cir.1997)).

Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
Single Means Claims
To set forth at the outset what should be apparent, claim 35 is a
single means claim. It is not disputed that it is drafted in means-plus-
function format, and it is not disputable that it is drawn to a single
element. A mere recital of a multitude of elements or steps in a claim
is not determinative of the invention it defines. A claim must be read
in accordance with the precepts of English grammar. In claim 35, the
invention defined is what follows the word “comprising.” Indeed,
appellant has admitted that claim 35 is drawn to only a single element
when he asserts that it is not drawn to a combination. Appellant's
denomination of every noun in the claim as a separate element ignores
the fact that these words function as mere description of the single
claimed means.
Having made clear that, in our view, claim 35 denotes only a
single means, we agree with the board that it is properly rejected
under §112, but we disagree with the board that the second paragraph
of §112 is the proper statutory basis for the rejection. The proper
statutory rejection of a single means claim is the requirement of the
first paragraph of §112 that the enabling disclosure of the
specification be commensurate in scope with the claim under
consideration.
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The long-recognized problem with a single means claim is that
it covers every conceivable means for achieving the stated result,
while the specification discloses at most only those means known to
the inventor. See O'Reilly v. Morse, 56 U.S. 62, 112 (1853). Thus, the
claim is properly rejected for what used to be known as “undue
breadth,” but has since been appreciated as being, more accurately,
based on the first paragraph of §112. As stated in In re Borkowski,
442 F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA 1970) (footnotes
omitted, emphasis in original):
The first sentence of the second paragraph of §112 is essentially
a requirement for precision and definiteness of claim language.
If the scope of subject matter embraced by a claim is clear, and
if the applicant has not otherwise indicated that he intends the
claim to be of a different scope, then the claim does particularly
point out and distinctly claim the subject matter which the
applicant regards as his invention. That is to say, if the
“enabling” disclosure of a specification is not commensurate in
scope with the subject matter encompassed by
a claim, that fact does not render the claim imprecise or
indefinite or otherwise not in compliance with the second
paragraph of §112; rather, the claim is based on an insufficient
disclosure (§112, first paragraph) and should be rejected on that
ground. See In re Fuetterer, 50 CCPA 1453, 319 F.2d 259, 138
USPQ 217 (1963); In re Kamal, 55 CCPA 1409, 398 F.2d 867,
158 USPQ 320 (1968); and In re Wakefield (PA 8192), decided
concurrently herewith. [422 F.2d 897, 164 USPQ 636 (CCPA
1970).] Thus, just as a claim which is of such breadth that it
reads on subject matter disclosed in the prior art is rejected
under §102 rather than under the second paragraph of §112, a
claim which is of such breadth that it reads on subject matter as
to which the specification is not “enabling” should be rejected
under the first paragraph of §112 rather than the second. We do
not intend hereby to suggest that rejections under §112 must be
labeled “first paragraph” or “second paragraph.” What we do
suggest is that it should be made clear exactly which of the
several requirements to §112 are thought not to have been met.
Is the claim unclear or is the specification's disclosure
inadequate to support it?
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The final paragraph of §112 saves combination claims drafted using
means plus-function format from this problem by providing a
construction of that format narrow enough to avoid the problem of
undue breadth as forbidden by the first paragraph. But no provision
saves a claim drafted in means-plus function format which is not
drawn to a combination, i.e., a single means claim.

In re Hyatt, 708 F.2d 712,714-715 (Fed. Cir. 1983).
Computer Enabled Means Plus Function Language
When the means-plus-function limitation in a claim is a computer-
enabled means-plus-function limitation, one must set forth in the
specification sufficient description of an algorithm associated with the
function recited in the claim in order to avoid a finding that an applicant has
failed to particularly point out and distinctly claim the invention as required
by the second paragraph of section 112.
It is certainly true that the sufficiency of the disclosure of algorithmic
structure must be judged in light of what one of ordinary skill in the
art would understand the disclosure to impart. See, e.g., Intel Corp. v.
VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003) (knowledge of a
person of ordinary skill in the art can be used to make clear how to
implement a disclosed algorithm); Atmel Corp., 198 F.3d at 1379
(“[T]he ‘one skilled in the art’ analysis should apply in determining
whether sufficient structure has been disclosed to support a means-
plus-function limitation.”). That principle, however, has no
application here, because in this case there was no algorithm at all
disclosed in the specification. The question thus is not whether the
algorithm that was disclosed was described with sufficient specificity,
but whether an algorithm was disclosed at all.

Aristocrat Techs. Australia Party. Ltd. vs. Int’l Game Tech., 521 F.3d 1328,
1337 (Fed. Cir. 2008).
When there is insufficient description of an algorithm in the
Specification to support a computer-enabled means-plus-function limitation
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in a claim, the disclosure will be considered inadequate to explain to one of
ordinary skill in the art what is meant by the claim language.
For computer-implemented means-plus-function claims where the
disclosed structure is a computer programmed to implement 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. Int'l Game
Tech., 184 F.3d 1339, 1349 (Fed.Cir.1999). Thus the patent must
disclose, at least to the satisfaction of one of ordinary skill in the art,
enough of an algorithm to provide the necessary structure under §
112, ¶ 6. This court permits a patentee to express that algorithm in any
understandable terms including as a mathematical formula, in prose,
see In re Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a
flow chart, or in any other manner that provides sufficient structure.
[new ¶] The district court correctly determined that the structure
recited in the ′505 specification does not even meet the minimal
disclosure necessary to make the claims definite. Simply reciting
“software” without providing some detail about the means to
accomplish the function is not enough. See Aristocrat Techs. Austl.
Pty v. Int'l Game Tech., 521 F.3d 1328, ---- (Fed.Cir.2008) (“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.”). This court does not impose a lofty standard in its
indefiniteness cases. See, e.g., Med. Instrumentation & Diagnostics
Corp. v. Elekta AB, 344 F.3d 1205, 1214 (Fed.Cir.2003). But in this
case, the claims are already quite vague. Without any corresponding
structure, one of skill simply cannot perceive the bounds of the
invention.

Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
2008).
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When a Specification discloses no algorithm corresponding to a
computer-enabled means-plus-function limitation in a claim, an applicant
has necessarily failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112. See also
Aristocrat, 521 F.3d 1328, 1333 (quoting Harris Corp. v. Ericsson Inc., 417
F.3d 1241, 1253 (Fed. Cir. 2005) (“‘[t]he corresponding structure for a § 112
¶ 6 claim for a computer-implemented function is the algorithm disclosed in
the specification.’ Harris 417 F.3d at 1249.”); Net MoneyIN, Inc. v.
Verisign, Inc. 545 F.3d 1359, 1367 (Fed. Cir. 2008) (‘“[A] means-plus-
function claim element for which the only disclosed structure is a general
purpose computer is invalid if the specification fails to disclose an algorithm
for performing the claimed function.”). See also Blackboard, Inc. v.
Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009) (finding Blackboard’s
means-plus-function claims indefinite because the patent describes an
undefined component, i.e., a black box, that performs the recited function
but does not disclose how the component performs the function). See
further Ex parte Catlin, 90 USPQ2d 1603, 1605 (BPAI 2009) (precedential)
(during prosecution, computer-enabled means-plus-function claims will be
held unpatentable under 35 U.S.C. § 112, second paragraph, as being
indefinite if a Specification fails to disclose any algorithm corresponding to
the recited function in the claims).
Analysis of Claims 1-10
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 1, 2-4 and 6 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement for the reasons which follow:
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1. Claim 1 recites in pertinent part: a mechanism for enabling entry of
a query for a service and, entry of one or more user context elements, each
element representing a context associated with the current buyer state and
having context attributes and attribute values associated therewith, said
mechanism further enabling buyer specification of relevant service selection
criteria for enabling expression of relevance of service results in terms of
user context.
Appellants’ Summary Section of their Brief cites to page 10, line 6 to
page 11 line 8; page 11 lines 10-15; page 12 , lines 5-22 as defining this
mechanism. (Appeal Br. 4)
2. We find that claim 1 is in the 35 U.S.C. § 112, paragraph 6 format
even though it uses the words “mechanism for.…” See supra, Welker
Bearing Co. v. PHD Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008).
3. A claim limitation that includes the term “means” is presumed to
be intended to invoke means-plus-function treatment, i.e., treatment under
35 U.S.C. §112, 6th paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302 (Fed. Cir. 1999) (“presumed an applicant advisedly used the
word “means” to invoke the statutory mandates for means-plus-function
clauses.”).
4. Claim 1 is a single means claim, e.g., a means recitation does not
appear in combination with another recited element of means. Cf. In re
Hyatt, 708 F.2d 712 (Fed. Cir. 1983).
5. We therefore reject claim 1 as failing to meet the enablement
requirement of the first paragraph of §112 because the claim reads on
subject matter as to which the specification is not “enabling”.

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Dependent claims 2-4 and 6
6. Claim 2 recites in pertinent part wherein the context associated with
the current buyer state includes affective (emotive) data such changes in
facial expressions, voice and body temperature. Claim 2 thus merely further
defines the context as perceived emotive data of facial expressions, voice
and body temperature. Nothing in the claim introduces an additional part of
an apparatus so as to create a combination of parts. This is because the claim
only further describes the content of the data being handled by the
mechanism. We therefore also reject claim 2 as failing to meet the
enablement requirement of the first paragraph of § 35 U.S.C. § 112.
Claim 3 recites in pertinent part wherein the affective (emotive) data is
used to inform the user context to aid in the buyer's selection and fine tuning
of relevant service bundles. Nothing in claim 3 introduces an additional part
of an apparatus so as to create a combination of parts. This is because the
claim only further describes how the information is used without mention of
any structure for carrying out the desired use. We therefore also reject claim
3 as failing to meet the enablement requirement of the first paragraph of 35
U.S.C. § 112.
Claim 4 similarly recites in pertinent part wherein the affective
(emotive) data is used to inform the user context to aid in recommending
changes in service configurations during delivery. Again, nothing in claim 4
introduces an additional part of an apparatus so as to create a combination of
parts. This is because the claim only further describes how the information is
used without mention of any structure for carrying out the desired use. We
therefore also reject claim 4 as failing to meet the enablement requirement of
the first paragraph of 35 U.S.C. § 112.
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Claim 6 recites in pertinent part a visual decision support tool enables
buyers to perform confirmatory analysis, what if analysis and iterative,
undirected exploratory analysis of alternative services bundles.
The Specification at page 12 lines 5 through 14 describes that this tool is
part of a work space which includes an absolute interface allows a user to
directly compare two alternative service bundles including the limitations of
claim 6. Appellants’ Summary section of their Brief includes this section as
part of the description of the mechanism. Thus, we find that the decision
support tool although named as a “tool” is in fact merely the same part of the
single means of claim one. We therefore also reject claim 6 as failing to
meet the enablement requirement of the first paragraph of 35 U.S.C. § 112.
Dependent claims 5, 7-10
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 5, 7-10 under 35 U.S.C. § 112, second paragraph, as being
indefinite for the reasons which follow:
7. Each of claims 5, 7-10 require graphical user interface (GUI).
The Specification describes the GUI in the context of “Figure 1 depicts
alternative paths through the ten graphical user interfaces available to the
service buyer as part of the end to end solution covering the spectrum of pull
activities from purchase decision support throught (sic through) service
delivery. (Specification 10: 6-8). Although not described in the
Specification as used with a display device, we find that a GUI desktop, such
as presented in Figure 2 with icons and a WINDOWS start button inherently
requires a display device and associated driver(s) which we find constitutes
another separate part of the mechanism of claim 1. Since we find that claims
5, 7-10 recite a combination of at least the mechanism of claim 1 and GUI
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display hardware, claims 5, 7-10 meet the enablement requirement of the
first paragraph of § 35 U.S.C. 112.
8. However, each of claims 5, 7-10 depend from claim 1 and thus
require the mechanism/means of claim 1. We thus determine whether the
means of claim 1 includes a computer enabled means-plus-function
limitation.
We look first to the Specification (2:14-16) where Appellants describe
that “[t]his invention relates generally to the composition (creation),
execution (delivery), and monitoring (measurement) of context-based,
customized service bundles over computer networks.” Appellants’ Summary
Section of their Brief describes this means by citing to page 10, line 6 to
page 11 line 8; page 11 lines 10-15; page 12 , lines 5-22 as defining this
mechanism. (Appeal Br. 4) This section of the Specification describes
computer controlled processes which are implemented via a series of
desktop workspaces, e.g., Personal Service Area in Desktop Workspace 20
to select relevant service domain and then access a user Overview
Workspace 30 in which a two dimensional plot showing data points coded to
distinguish different domains. (Specification 10:8-11) We thus find that the
mechanism/means of claim 1 is drawn to a computer implemented
limitation.
9. We have reviewed the disclosure at page 10, line 6 to page 11 line
8; page 11 lines 10-15; page 12 , lines 5-22 which Appellants state describes
the mechanism/means of claim 1, but have not been able to discern the
algorithm corresponding to the function for enabling entry of a query for a
service and, entry of one or more user context elements, each element
representing a context associated with the current buyer state and having
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context attributes and attribute values associated therewith, said mechanism
further enabling buyer specification of relevant service selection criteria for
enabling expression of relevance of service results in terms of user context.
10. For the foregoing reasons, we find that the Specification does not
adequately describe an algorithm corresponding to the function “enabling
entry of a query for a service and, entry of one or more user context
elements, each element representing a context associated with the current
buyer state and having context attributes and attribute values associated
therewith, said mechanism further enabling buyer specification of relevant
service selection criteria for enabling expression of relevance of service
results in terms of user context.” The Specification fails to disclose an
algorithm corresponding to the recited function at issue in claim 1 such that
one of ordinary skill in the art could determine the scope of claim 1.
Accordingly, we reject claims 5, 7-10 under 35 U.S.C. § 112, second
paragraph, as being indefinite.

Claims 11-14
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 11-14 under 35 U.S.C. § 112, second paragraph as being
indefinite.
Analysis
1. Claim 11 recites: means further enabling buyer specification of
relevant service selection criteria for enabling expression of relevance of
service results in terms of user context. The limitation “means further
enabling buyer specification of relevant service selection criteria for
enabling expression of relevance of service results in terms of user content”
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includes the term “means.” A claim limitation that includes the term
“means” is presumed to be intended to invoke means-plus-function
treatment, i.e., treatment under 35 U.S.C. §112, 6th paragraph. Rodime PLC
v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999) (“presumed an
applicant advisedly used the word “means” to invoke the statutory mandates
for means-plus-function clauses.”).
2. We construe the means-plus-function claim language of claim 11
as follows:
Step 1- The first step in construing a means-plus-function claim
limitation is to define the particular function in the means-plus-function
limitation.
The particular function of the means-plus-function claim limitation at
issue is “enabling buyer specification of relevant service selection criteria
for enabling expression of relevance of service results in terms of user
content.”
Further, given the claim as a whole being directed to a self service
system for service enhanced resource delivery, comprising a mechanism for
enabling entry of a query for a service and entry of one or more user context
elements, a person with ordinary skill in the art would construe the claim
limitation “means further enabling buyer specification of relevant service
selection criteria for enabling expression of relevance of service results in
terms of user content” to refer to a computer-enabled means-plus-function
limitation. This is because the Specification at a minimum describes User
Results Display Workspace 90 as part of this means which enables the user
to continue to learn about the service bundles suggested, select additional
service enhancers to add to the bundles, and directly compare two alternative
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service bundles using the Absolute interface, including the option to perform
confirmatory analysis, what if analysis and iterative, undirected exploratory
analysis of alternative services bundles prior to making a final selection.
(Specification 12:5-14). Such steps taken in light of a claimed mechanism
are construed to use a computer enabled means to effect such a process.
Step 2 The next step in construing a means-plus-function claim
limitation is to look to the Specification and identify the corresponding
structure for that function. Given that the claim limitation “means further
enabling buyer specification of relevant service selection criteria for
enabling expression of relevance of service results in terms of user content”
is reasonably broadly construed to be a computer-enabled means-plus-
function limitation, this requires looking to the Specification and identifying
the algorithm corresponding to the involved function. See Blackboard, Inc.,
574 F.3d at 1375, Net MoneyIN, Inc.,545 F.3d at 1367, Finisar Corp., 523
F.3d at 1340-41, Aristocrat, 521 F.3d at 1337, and Ex parte Catlin, 90
USPQ2d at 1605, supra.
3. In that regard, we note that in the Summary of Claimed Subject
Matter (App. Br. 4), the Appellants have attempted to show where in the
Specification, by page and line number, there is disclosed structure, material,
or acts corresponding to each claimed function as required by 37 C.F.R. §
41.37(c)(1)(v) (2007). With regard to the claim 11 means-plus-function
limitation at issue, the Appeal Brief directs us to p. 12, ll. 5-22 of the
Specification and Fig. 3. App. Br. 4.
4. We have reviewed the disclosure at p. 12, ll. 5-22 of the
Specification and Fig. 3 but have not been able to discern the algorithm
corresponding to the function “means further enabling buyer specification of
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relevant service selection criteria for enabling expression of relevance of
service results in terms of user content.”
5. The disclosure at p. 12, ll. 5-22 of the Specification is reproduced
below and the Specification in this section describes two processes for
enabling expression of relevance of service results. The first is a User
Results Display Workspace and the second is a User Service Enhancers
Management Workspace. Each is described as follows:
a. The Specification 12, ll. 5-13 describes:
When the user proceeds to the "User Results
Display Workspace" 90 (Figure 9), they can
visualize N and explore the response set that the
system has found to best match the user's initial
query and related subject and context variables.
This workspace enables the user to continue to
learn about the service bundles suggested, select
additional service enhancers to add to the bundles,
as illustrated at 100 (Figure 10), and directly
compare two alternative service bundles, as
illustrated at 110 (Figure 11), using the Absolute
interface, including the option to perform
confirmatory analysis, what if analysis and
iterative, undirected exploratory analysis of
alternative services bundles prior to making a final
selection. (Specification 12:5-14)
b. The (Specification 12:15-22) describes:
… the "User Service Enhancers Management
Workspace" 120 which enables users to
dynamically manage the services mix during
delivery based on changes in relevancy and price
and to save and reuse successful services or entire
service bundles as templates for future buying
decisions. If the primary service being delivered is
electronic in nature (such as an e-learning course
vs. a physical service such as an airline flight,
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Figure 13 shows at 130 the workspace in which the
electronic service is delivered. The minimized
Current Services icon and Available Services icon
enable the user to access the corresponding
graphical user interfaces as shown in Figure 12.

6. In effect, the Specification repeats, in different words, the function
at issue. There is no disclosure that explains the structure of the algorithm
itself that would cause the recited function to be performed. Also, there is
no evidence on the record that one of ordinary skill in the art at the time of
the invention would have understood what this algorithm would be. Given
all this, we find that the Specification does not adequately describe an
algorithm corresponding to the function “means further enabling buyer
specification of relevant service selection criteria for enabling expression of
relevance of service results in terms of user content” such that one of
ordinary skill in the art could determine the scope of claim 11.
7. For the foregoing reasons, we find that the Specification does not
adequately describe an algorithm corresponding to the function “enabling
buyer specification of relevant service selection criteria for enabling
expression of relevance of service results in terms of user content”. The
Specification fails to disclose an algorithm corresponding to the recited
function at issue in claim 11 such that one of ordinary skill in the art could
determine the scope of claim 11. Accordingly, we reject claim 11 under 35
U.S.C. § 112, second paragraph, as being indefinite.
The analysis above applies equally as well to dependent claims 12-14
because claims 12-14 depend from claim 11 and therefore include the same
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deficiency. Thus, claims 12-14 are also rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.

CONCLUSION
We have considered the Appellants’ Request for Rehearing. Our
review of the record in light of the Appellants’ arguments has led us to
modify our position.
We enter new grounds of rejection for claims 1-14.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

GRANTED

MP

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