This case serves as a reminder that means plus function elements really do relate only to the structure actually disclosed, not everything within the purview of one of ordinary skill. For computer-implemented means plus function elements to satisfy the test for definiteness, the court essentially outlined three options: “instruction for using a particular piece of hardware, employing a specific source code, or following a particular algorithm.” I think it is actually encouraging here that the court listed these as alternatives, and did not, for example, require an algorithm per se. This appears to lend credence to my recent strategy for traversing such rejections by including (or pointing to) a boilerplate hardware paragraph (e.g., “the various embodiments may be implemented by a processor and memory, digital logic, … “) and arguing that this provides adequate structure regardless of any “algorithm.” (I have never liked the idea of arguing structure based on an algorithm, and believe that 99% of the time the applicant included means limitations to cover as much physical hardware as possible anyway, not an algorithm.)
Background / Facts: The patents in suit here were directed to online shopping systems that, in contrast to older systems only enabling the user to generate a single purchase order that would be submitted to a single vendor, provides the ability to divide a single requisition (or shopping list) into multiple purchase orders. Despite the fact that this is clearly done on computers, all of the system claims were written in means plus function form.
Issue(s): Whether the specification discloses an accompanying structure for the “means for processing” limitation.
Holding(s): No. In addressing each passage in the specification pointed to by the patentee and the court below, the CAFC noted that the description provides at most “just a black box that represents the purchase-order generation function without any mention of a corresponding structure,” and that “there is no explanation as to what structure or algorithm should be used to generate the purchase orders.” The court particularly shot down the argument that one skilled in the art would, based on the prior art and his own common knowledge, understand what hardware may be used to implement the means for processing: “The indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention.”