In re Aoyama — are we headed back to object or source code appendices?

In re Aoyama (10-1552) is yet another head scratcher from the Federal Circuit in the area of software patents, and in particular on the topic of what constitutes sufficient software strucutre under 35 U.S.C. § 112 ¶ 6.   Judge Newman’s dissent is the only thing that makes any sense in this case.  Claim 11, which is representative, and its supporting Figure 8, are set forth below.

11. A system for supply chain management com-prising:

an order controller system including

reverse logistics means for generating transfer data; and

 

a warehouse system receiving the transfer data and generating shipping data.

As set forth by the majority in In re Aoyam, “The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation. … Here, both parties agree that the identified function of the limitation of claims 11 and 21 at issue is “generating transfer data.”  The majority goes on:  “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.”

 The majority then found, agreeing with the Board, that “[t]here is no structure or algorithm for generating transfer data disclosed in the discussion of Figure 8 at Specification paragraphs 0088-93. These paragraphs do discuss generating shipping data, but again without disclosing any structure or algorithm for doing so.”  According to the majority, the Board properly recognized that while Figure 8 provides a high level process flow, “it does not describe any structure.”  Accordingly, the majority agreed with the Board’s conclusion that Figure 8 “fails to describe, even at a high level, how a computer could be programmed to produce the structure that provides the results described in the boxes.”  Finally, the majority found that “[b]ecause the means-plus-function limitation of claims 11 and 21 lacked sufficient disclosure of structure under 35 U.S.C. § 112 ¶ 6, these claims are unpatentable as indefinite under 35 U.S.C. § 112 ¶ 2. 

The majority further states that “For means-plus-function limitations where the disclosed structure is a computer programmed to implement an algorithm, the patent must disclose enough of an algorithm to provide the necessary structure under 35 U.S.C. § 112 ¶ 6.” 

As aptly pointed out by the dissenting Judge Newman, Figure 8 and the corresponding portion of the Applicants’ specification discuss at length the computer operation corresponding to the claimed function of generating transfer data.  As such, it is difficult to understand the majority’s insistence that the disclosure did not describe sufficient structure or disclosure to satisfy  35 U.S.C. § 112 ¶ 6, particularly since the specification specifies that the functionality described in the flow charts:

 “can be implemented in hardware, software, or a suitable combination of hardware and software, and each of which can be one or more software systems operating on separate general purpose processing platforms. As used herein, a hardware system can include discrete semiconductor devices, an applica-tion-specific integrated circuit, a field programma-ble gate array or other suitable devices. A software system can include one or more objects, agents, threads, lines of code, subroutines, separate soft-ware applications, user-readable (source) code, ma-chine-readable (object) code, two or more lines of code in corresponding software applications, data-bases, or other suitable software architectures. “

One question raised by In re Aoyama is whether or not the disclosure supports any structural claim that requires “generating transfer data”, or whether it is only means plus function claims that the disclosure is inadequate to support.  Logically speaking, it would seem that if Figure 8 and the specification do not disclose enough structure to support a means plus function claim element, it would not likely comply with 112 (2) either. 

If one seeks to avoid having software patent claims found inadequate under 112(2) or 112(6), it would appear that the safest bet is to include object or source code to support the claimed functionality.  With object or source code, the application would describe at least one highly particular implementation that would, for any given compiler or interpreter, define a specific software structure.  On the other hand, anything short of what might be considered a specific machine-implemented process may be found inadquate.







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