Not much besides its entertainment value. This appears to simply be a case of an inexperienced and possibly delusional applicant.
Background / Facts: It’s not a good sign for the appellant when the opinion starts off by noting that “[i]n essence, Hartman claimed to have invented the Internet.” Indeed though, the specification (filed in 2004) describes the invention as “a new and revolutionary business process in which the computer by way of a modem is used to access, retrieve, and exchange goods, services, and information.” Hartman asserted that her “introduction of this invention in 1990 … led to the formation of the INTERNET [sic].” Exemplary claim 26 literally reads as follows: “Claims a novel business method whereby the computer with its communicable devices is the focal point of the business and transactions occur online or in cyberspace. Herein cyberspace is referred to as that virtual space within which transactions and exchanges occur and that exists between the interconnection(s) of the communicable devices with remote websites. Cyberspace is infinite and thus an infinite number of transactions or interactions is possible. A website(W) is herein referred to as pages that are received from the host or recipient computer and that display on the monitor of the user’s computer once the connection is established. See Figs[.] 1-6.” The examiner rejected all thirty-five claims as being indefinite under 35 U.S.C. § 112, 2nd paragraph, noting that the claims “fail[] to define the invention in the manner required by” the statute, “are narrative in form and replete with indefinite and functional or operational language,” and are not limited to a single sentence per claim.
Issue(s): Whether narrative claims completely lacking structure and failing to conform to statutory requirements are indefinite.
Holding(s): Yes. To the court’s credit, it took this appeal seriously, finding that the claims “fail to recite any specific steps, instead merely stating the existence of a ‘novel business method’ (or an ‘innovative business method’) and describing the benefits that flow from its use.” Hartman’s failure to recite any required steps accordingly renders these claims indefinite, since it leaves the claims without any meaningful limitations. “Because Hartman has not clearly distinguished what is claimed from what went before in the art and clearly circumscribed what is foreclosed from future enterprise, … the examiner properly rejected these claims as indefinite.”