PTAB Holds Software Claims Indefinite

With all the attention paid recently to patent-eligibility questions under 35 U.S.C. § 101, patent drafters should take note of a recent decision by the USPTO’s Patent Trial and Appeal Board (PTAB) holding claims indefinite under 35 U.S.C. § 112, second paragraph.  In In re Dawson, Appeal 2012-004396 (Sept. 18, 2014), the PTAB entered a new ground of rejection under Section 112, and consequently reversed rejections under 35 U.S.C. § 102(e) on grounds that the invention could not have been well enough understood for a prior art rejection to have been made.

The patent applicant had appealed the Examiner’s rejection of the following claim:

1. A method, performed on a computer system, for ameliorating an offer of transport that a first avatar online in a virtual universe is targeted to receive from a second avatar online in the virtual universe for teleporting to another virtual region within the virtual universe for exposure to an advertisement, the method comprising:

using the computer system to perform the following:

detecting that the second avatar has sent the first avatar the offer of transport to the virtual region for exposure to the advertisement via a virtual universe client that provides interaction with the virtual universe;

intercepting the offer of transport prior to being received by the first avatar; and

determining whether to present the offer of transport to the first avatar.

The PTAB found that limitations relating to an “avatar” taking action with respect to “an offer of transport” were “indefinite because an avatar is a figment of a user’s imagination.”  The PTAB reasoned that:

An avatar, being simply a representation or persona, does not exist in a form that can send an offer, receive an offer, or have an offer presented to it. As a result, there is no way to know the metes and bounds of how the avatar sends an offer, receives an offer, and has an offer presented to it.

To the extent Appellants mean to say each of these occur by the avatar appearing on a screen to send, receive or be offered the offer, again, such screen images have meaning only in the mind of the beholder and the avatars do not, themselves, send or receive an offer or be the subject of a presentation of an offer. Such an interpretation would also strip the limitations of any meaning simply by disconnecting a display device, which itself is incapable of implementing software processes. The lack of meaning as to these limitations is particularly acute as these are the limitations Appellants most rely on to distinguish from the art.

Thus, after entering a new ground of rejection under Section 112, the PTAB reversed a Section 102 rejection “because this rejection is necessarily based on speculative assumptions as to the meaning of the claims.”

Notably, the PTAB did not address the question of Section 101 patent-eligibility with respect to the above claim.  Presumably, if the scope of the claim was not clear for prior art purposes, it could not have been clear for purposes of determining patent-eligibility.

The lesson for claim drafters is this:  not only can abstract claim terms cause patent-eligibility problems, but such claim terms can also render claims indefinite.  Moreover, with a little attention, such problems are easily avoided.  For example, in the present claim, one would think that an amendment clarifying who or what was sending, presenting, etc., would cure the Section 112 rejection.  Even without having reviewed the specification, I would venture to suggest that the specification surely supports such an amendment.

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