Sunday, November 2, 2014

Method Claims - Should They Recite Computer Terminology?

Although the Supreme Court stated it wouldn't give much weight to whether a method claim recites a computer in Alice v. CLS Bank, it may be a good idea to recite computer language in the claim in some cases.

During examination, an examiner should give a claim the broadest reasonable interpretation consistent with the specification. For example, in Phillips v. AWH Corp. the Federal Circuit stated an examiner should determine the scope of claims not solely on the claim language, but on the broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."

The logic for the broadest reasonable interpretation standard is an applicant can amend claims during prosecution, and giving a claim the broadest reasonable interpretation reduces the possibility the issued patent claim will be interpreted more broadly than justified.

Let me explain now how this might apply using an example. In Application of Prater the CCPA considered a patent applicant pursuing a claim reciting a process of analyzing data generated by mass spectrographic analysis of a gas. The specification said the process included subjecting the data to be analyzed in a mathematical manipulation. The examiner rejected the claim as anticipated, because "analyzing data generated by mass spectrographic analysis" could be read on a mental process using a pencil and paper. The court agreed the claim was not limited to implementation on a machine, since the claim did not expressly recite it. The court explained "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." In short, Application of Prater indicates you cannot import subject matter (e.g., a machine or a computer) described in the specification into the claim where that subject matter is not recited in the claim.

Thus, if you want a method implemented in software to not read on a mental process, it may be better to recite the computer language in the body of the claim if you can live with the narrower claim.

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