The Software IP Report

CAFC Affirms Rejections of Computer Product-by-Process Claim

The Federal’s circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision in turn affirming a patent examiner’s rejections under 35 U.S.C. § 101 for lack of patent-eligibility, and under 35 U.S.C. § 112 for lack of written description and indefiniteness, of a product-by-process claim directed to “a resource planning forecast product.” In re Downing, No. 2018-1795 (Fed. Cir. Dec. 7, 2018) (non-presidential).

The only independent claim at issue reads as follows (emphases provided by the court):

1. A resource planning forecast product operable in a computer and recorded on a non-transitory computer-readable medium for retrieval interlinking non-business or business information relevant to the end user without mandatory reliance on a network or another computer file or Internet access to operate wherein the product is produced by the processes of:

(a) designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework to: (1) simplify forecasting initialization with defaults option and exclusion of advanced statistical requirements in forecasting, (2) consider social and technological change, (3) make forecasts of operations and development and strategic plans of 1-5-15 years simultaneously, and (4) provide automatic updates reducing manual operations and storage requirements such that this process taken in combination improves the end user’s ease of operation and assessments;

(b) structuring presentations on the same computer platform by linking display of the forecasted data with features of: (1) additional resource planning applications beyond the typical such as an information resource utility and intangibles, (2) adjacent display of the operations and development and strategic plans’ 1-5-15 year forecasts, and (3) comprehensive print views available simultaneously of forecasted activity reports, resource plans, and yearly performance next 15 years such that this process taken in combination expands the utility of resource planning in the field of forecasting; and

(c) constructing one-time settings for the structure, on the same computer platform, for the capability of accommodating the full extent of resource planning cited and more efficient operation by: (1) fixed display of self explanatory instructions and definitions, (2) only 4 required settings of initializing diffusion indices, starting calendar date, nonfinancial or financial mode, and the names for activity reports, resource plans, and optional information reports, and (3) optional settings related to goals-objective-missions, allocations, and risk-impact data such that this process taken in combination improves the end users’ ease of use and availability of forecasted resource planning applications;

such that this product’s capabilities and features accommodate the full extent of resource types and resource planning (encompassing the five categories of planning noted) for operation by non-technical or technical users in one unbundled computer file through end user interaction with displays.

If you have made your way through the claim, or even if you didn’t, you have probably figured out that this was a fairly easy case for the Federal Circuit. It is not surprising that this was designated non-precedential.

Concerning the § 101 patent-eligibility rejection, the applicant tried to rely on Federal Circuit’s 2016 decision in McRO, Inc. v. Bandai Namco Games America Inc. But the present claims were “directed to the concept of personal management, resource planning, or forecasting,” and as such were a patent-ineligible recitation of “collecting, analyzing, and displaying information as abstract ideas,” as found, for example, in Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016). The claims recited nothing more than generic computer components, and therefor there was nothing to save them under step two of he Alice/Mayo test.

Concerning the rejection for lack of written description under § 112, the patent examiner and the PTAB had found that there was no written description of “intangibles.” The applicant argued during prosecution that one skilled in the art would have understood what the term meant, and then tried to add a definition. The court agreed with the PTAB and the examiner that attempts to define the term were new matter, and affirmed the rejection because there was no evidence that one skilled in the art would have understood the term to have the definition proposed by the applicant.

Moreover, the claims were indefinite under § 112 because the claim was cast as a product-bi-process claim, but “does not recite the steps for making the claimed product.” The claims therefor failed the indefiniteness test of Nautilus, Inc. v. Biosign Instruments, Inc. (S. Ct. 2014). It was unclear how recited claim limitations of “designing,” “structuring,” and “constructing one-time settings,” amounted to a description of “how the forecasting product is made read” rather, the claims simply recited “functions or features of the forecasting product in part no information on how to actually make the product.”

Finally, and probably of absolutely no solace to the applicant, the court agreed that the recitation of “the end user” was not indefinite for lack of antecedent basis. Even though the term “the end user” was introduced “without an antecedent basis,” the claim only referenced one and user and it was clear who the end user would be. Therefore, the lack of antecedent basis for this term did not render the claim indefinite.

Lessons for Practice

Even though the claim at issue in this appeal did not present a close case for patent-eligibility or § 112 written description or indefiniteness, it is perhaps all the more worth looking at as a clear example of the perils of functional claiming. As I have said before, functional claiming, although impossible to avoid in all computer cases, it is nonetheless both a patent-eligibility § 101 trap, and a possible § 112 pitfall.

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