In Ex Parte Rodriguez, the Board of Patent Appeals and Interferences (“BPAI”) reversed the patent Examiner’s rejection of U.S. Patent Ser. No. 132492 entitled “Automated random verification of complex and structurally-variable systems.” However, using its authority under 37 C.F.R. § 41.50(b), the BPAI entered new grounds for the rejection, specifically a lack of definiteness for failing to provide a structure for performing the functions in the broad claims.

The Appellants’ patent application described an adaptable apparatus for automated testing of variable and complex systems, for example a circuit. The Examiner rejected all of the claims as anticipated by U.S. Patent No. 6,076,180. The applicants appealed to the BPAI, which entered new grounds for rejection. The issues on appeal were whether the claims should be construed as means-plus-function claims and whether the method and computer readable medium claims were definite and enabled as required by 35 U.S.C. § 112. The BPAI construed the apparatus claims as means-plus-function and then rejected all the claims for indefiniteness.

First, the BPAI construed claim 10 as a means-plus-function claim and invoked 35 U.S.C. § 112 ¶ 6. Next, it relied on Aristocrat Techs. Austl. PTY Ltd. v. Int’l. Game Tech., 543 F.3d 657 (Fed. Cir. 2008) to hold that without reference to a specific computer or algorithm to be executed on a general purpose computer the claims were purely functional. Neither the claim nor the specification contained the necessary details of how to implement the functions of “building and generating” or “verifying” listed in the claim, therefore the claim failed for indefiniteness.

Next, the BPAI rejected apparatus claims 1-4, 6-9, 19 and 20 under 35 U.S.C. § 112 ¶ 2 for a similar failure to provide structure. The BPAI also construed these claims as means-plus-function despite lacking the typical format because none of the terms were nouns denoting structure. The claims were indefinite because the details of how the “system builder” and “simulation verification environment” perform their functions were not included in either the claims or the specification.

Finally, the BPAI rejected the rest of the claims under 35 U.S.C. § 112 ¶ 1 as not being enabled for the scope of the claims. The issue was whether a person skilled in the art could make the invention, which the BPAI decided by applying the eight factors from In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) for determining if making an invention from the application would require undue experimentation. The BPAI held that purely functional claim language needed to match the scope of an enabling disclosure, and that the Appellants failed that test because, again, the lack of structure tied to the functions made the claims too broad. Additionally, the lack of working examples and the small amount of instruction provided by the Appellants in their highly complex invention would require undue experimentation for a skilled artisan to make the invention.

Therefore, the BPAI rejected all eighteen claims for failure to comply with 35 U.S.C. § 112.