It has been consistently recognized in Office Actions and the Patent Trial and Appeal Board (PTAB) decisions that conditional claim language does not carry any patentable weight. For example, multiple Office Actions have indicated that a step of a method claim does not constitute a patentably distinguishable limitation against applied art if the step is performed when a condition is met. A precedential PTAB decision, Ex parte Schulhauser, went further to differentiate the patentable weights of conditional language respectively in method claims and system claims. Ex parte Schulhauser, PTAB, 2013-007847.
Claims 1 and 11 of the Schulhauser application recite similar features in different formats. Claim 1 is provided below in a flow chart to better illustrate the recited method. The recitations are marked and referred by letters.
In determining the broadest reasonable interpretation of claim 1, the Board indicates that the steps D-H may not be performed if a condition is met, i.e., “the electrocardiac signal data is not within the threshold electrocardiac criteria.” Slip Op. 8. The Board explains that claim 1 at least includes two methods. One method only includes the steps A, B, and C (the left sub-flow of the above flowchart) and the other includes the steps A, B, and D-H (the right sub-flow of the above flowchart). The former recited method is clearly broader than the latter method. Thus, the broadest reasonable interpretation of claim 1 is determined to cover a method only including the steps A, B, and C.
Under the guidance from Bristol-Mayers Squibb, the Board further concludes that the modified method in the primary reference (“Kramer”) would literally infringe claim 1 and, thus, the combination of the references renders the method recited in claim 1 obvious. Slip Op. 9 (citing Bristol-Mayers Squibb Co. v. Ben Venture Labs, Inc., 246 F.3d 1368 (Fed. Cir. 2001)). The Board’s analysis up to this point affirms the commonly seen notion that the conditional language in method claims does not bear patentable weights.
The second part of the Board’s decision becomes intriguing. Regarding the system claim 11 with means-plus-function language, the Board recognizes that “[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur.” Slip Op. 14. In other words, the processor programed for performing the steps D-H would still be required in the system whether or not the condition is met. Thus, the broadest reasonable interpretation of the system of claim 11 covers all the features recited therein. To show obviousness or anticipation, “the Examiner must cite prior art that discloses or renders obvious such structure [that performs a function tied to a condition precedent].” Slip Op. 15. Therefore, the system claim 11 is not rendered obvious because the combination of the references does not disclose or suggest the means for performing steps D-H.
The Board’s above decision can further apply to computer-readable medium claims by the same reasoning. That is, the code for performing certain steps has to be stored in the medium no matter whether the condition for triggering those steps is met. A later PTAB decision, Ex parte Blumenberg, 2015-007394, confirms the analogy.
After the Board issued this decision, Appellant of the application amended the method claim to eliminate the step C and added a step for determining the condition. The amended claim 1 is shown in a flowchart below.
The Schulhauser application received allowance quickly after the amendments and it makes sense to eliminate the previously recited step C. After all, step C does not seem to be a valuable feature of claim 1. Focusing more on other steps in claim 1 may better capture the commercial embodiment of the method.
The Appellant here was fortunate to have a solution that simple to obtain allowance. Many other applicants having similar problems may not be so lucky. For example, if subsequent steps after determining a condition is met or not are equally important and inventive, it becomes difficult to claim a binary tree with different steps depending upon the outcome of a decision block. Perhaps computer-readable medium claims and means-plus-function claims finally become a little more advantageous than method claims in this regard.