Ex parte Rodriguez

PRECEDENTIAL OPINION
Pursuant to Board of Patent Appeals and
Interferences Standard Operating Procedure 2.
the opinion below has been designated a
precedenti al opinion.
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ANDREA J. RODRIGUEZ, STEVEN R. EDWARDS,
CHRISTOPHER M. GILES, and RANDY S. MILLER
Appeal 2008-000693
Application 101132,492
Technology Center 2 100
Decided: October 1,2009
Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE and ALLEN R. MACDONALD, Vice Chief
Administrative Patent Judges, HOWARD B. BLANKENSHIP,
LINDA E. HORNER, JAY P. LUCAS, and ST. JOHN COURTENAY 111,
Administrative Patent Judges.
MACDONALD, Vice Chief Administrative Patent Judge.
DECISION ON APPEAL
1 This decision contains new grounds of rejection pursuant to 37 C.F.R.
5 41.50(b) (2007). 37 C.F.R. 5 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review ."

Appeal 2008-000693
Application 101132,492
I. SUMMARY OF THE DECISION
We reverse the decision of the Examiner finally rejecting claims 1-4
and 6-20.
Specifically, we reverse the Examiner's rejections of apparatus claims
1-4, 6-10, 19, and 20, under 35 U.S.C. 5 102(b) on the basis that these
claims are indefinite. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). We
also reverse the Examiner's rejection of method claims 11-17 and computer
readable medium claim 18 under 35 U.S.C. 5 102(b).
However, we enter new grounds of rejection as to all pending claims
pursuant to our authority under 37 C.F.R. 5 41.50(b). By rule, this panel has
discretion to add one or more new grounds of rejection.
Should the Board have knowledge of any grounds not involved
in the appeal for rejecting any pending claim, it may include in
its opinion a statement to that effect with its reasons for so
holding, which statement constitutes a new ground of rejection
of the claim.
37 C.F.R. 5 41.50(b) (emphasis added). The rule is permissive and merely
provides the Board panel the option of making a new ground of rejection.
Making a new ground of rejection is therefore an exercise of discretion made
solely at the option of the panel and is not a mandatory requirement. In the
opinion that follows, we have chosen to enter only the following new
grounds of rejection.
We enter a new ground of rejection of means-plus-function claim 10
under 35 U.S.C. 5 112, second paragraph, on the same basis set forth in
Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed.
Cir. 2008).

Appeal 2008-000693
Application 101132,492
We enter a new ground of rejection of apparatus claims 1-4, 6-9, 19,
and 20, under 35 U.S.C. 5 112, on the same basis set forth in Aristocrat.
We also enter an alternative new ground of rejection of apparatus
claims 1-4, 6-9, 19, and 20, under 35 U.S.C. 5 112, first paragraph, on
essentially the same basis as set forth in Exparte Miyazaki, 89 USPQ2d
1207 (BPAI 2008) (precedential).
We enter a new ground of rejection of method claims 11-17 and
computer readable medium claim 18 under 35 U.S.C. 5 112, first paragraph,
for lack of enablement, based on an undue experimentation analysis using all
of the Wands factors.
11. STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. 5 134 from a final rejection of
claims 1-4 and 6-20. We have jurisdiction under 35 U.S.C. 5 6(b).
Claim 5 has been cancelled.
According to Appellants, the invention relates to a first apparatus, a
second apparatus, a method, and a computer readable medium to
(a) generate a random system configuration file of a structurally variable and
complex system; (b) build a system level netlist in response to the random
system configuration file; (c) verify the structurally variable and complex
system in response to the system level netlist; and (d) provide automatic
random verification of the system in response to the random system
configuration file. (Abstract).

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Application 101132,492
Exemplary Claims
Exemplary claims 1, 10, 11, and 18, read as follows:
1. 	An apparatus comprising:
a system configuration generator configured to generate a
random system configuration file of a structurally variable and
complex system;
a system builder configured to (i) build a system level netlist
and (ii) generate system parameters in response to said random system
configuration file; and
a simulation verification environment configured to verify said
structurally variable and complex system in response to said system
level netlist, wherein said simulation verification environment is
configured to provide automatic random verification of said
structurally variable and complex system in response to said random
system configuration file.
10. 	An apparatus comprising:
means for generating a random system configuration file of a
structurally variable and complex system;
means for (i) building a system level netlist and (ii) generating
system parameters in response to said random system configuration
file;
means for verifying said structurally variable and complex
system in response to said system level netlist; and
means for providing automatic random verification of said
structurally variable and complex system in response to said system
configuration file.

Appeal 2008-000693
Application 101132,492
11. 	A method for automated random verification of structurally
variable and complex systems, comprising the steps of:
(A) generating a random system configuration file of said
system;
(B) generating one or more parameters of said system in
response to said random system configuration file;
(C) generating a system level netlist of said system in response
to said random system configuration file;
(D) verifying one or more target modules with said system in
response to said system level netlist; and
(E) automatically and randomly adjusting step (D) in response
to said random system configuration file.
18. 	A computer readable medium configured to perform the steps
(A), (B), (C) and (D) of claim 11.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Meyer 	US 6,076,180 	Jun. 13, 2000
Rejection on Appeal
The Examiner rejected claims 1-4 and 6-20 under 35 U.S.C. 5 102(b)
as being anticipated by ~ 	e 	~ 	e 	r 	. 	~
2 Although both the final rejection and Examiner's Answer discuss a
rejection of claim 5, we note that claim 5 was cancelled in the amendment
filed January 17, 2006. Therefore, claim 5 is not before us in this appeal.
Also, we note that the Examiner has withdrawn the rejection of claim 19
under 35 U.S.C. 5 112, second paragraph, as being indefinite. (Ans. 9,
11. 2-3).

Appeal 2008-000693
Application 101132,492
Examiner's Findings
The Examiner found that each limitation of claims 1-4 and 6-20 was
described in Meyer. (Final Rej . 4- 1I).'
Appellants' Contentions
Appellants contend that the Examiner erred in rejecting claims 1-4
and 6-20 under 35 U.S.C. 5 102(b) because Meyer fails to describe an
element, means, or step for performing building (or generating) a system
level netlist in response to a random system configuration file as is required
by all the claims (App. Br. 7-10).
111. ISSUES
A. Issues on Appeal
Whether Appellants have shown that the Examiner has erred because
Meyer does not teach the limitation of building (or generating) a system
level netlist in response to a random system configuration file required by
claims 1-4 and 6-20?
3 The Examiner's Answer repeats these rejections, but mistakenly labels
each of the fifteen rejections of claims 6-20 as rejections of claims 5-19
respectively.

Appeal 2008-000693
Application 101132,492
B. Additional Issues Raised by the Pending Claims
And Addressed in New Grounds of Rejection
(1)
Apparatus Claims
Whether apparatus claim 10, which is in means-plus-function format,
is definite under 35 U.S.C. 5 112, second paragraph if a means is not
supported by corresponding structure in the specification?
Whether apparatus claims 1-4, 6-9, 19, and 20, if construed as being
in means-plus-function format, are definite under 35 U.S.C. 5 112, second
paragraph if a means is not supported by corresponding structure in the
specification?
Whether apparatus claims 1-4, 6-9, 19, and 20, if construed as not
being in means-plus-function format, violate the rule set forth in Halliburton
Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), because the claims
include functional elements which are not limited by the application of 35
U.S.C. 5 112, sixth paragraph and do not contain any additional recitation of
structure, so that claims 1-4, 6-9, 19, and 20 are not enabled under
35 U.S.C. 5 112, first paragraph, for the scope of the claims?
(2)
Method Claims
Whether method claims 11-17 are unpatentable under 35 U.S.C.
5 112, first paragraph, as not being enabled for the scope of the claims?

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(3)
Computer Readable Medium Claim
Whether method claim 18 is unpatentable under 35 U.S.C. 5 112, first
paragraph, as not being enabled for the scope of the claim?
IV. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence. Ethicon, Znc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Office).
Appellants' Admissions
1. 	According to Appellants:
Conventional random verification methods manually
generate a limited number of systems and run customized
stimuli through each of the systems.
(Spec. 1,ll. 16-18).
2. 	Also according to Appellants:
[Sluch approaches are not efficient for complex and variable
system verification.
(Spec. 1,ll. 18-19).
3. 	Further according to Appellants:
In complex and structurally variable systems a high
number of possible combinations of system structures,
configurations, stimuli, and responses are present. Conventional
random verification systems do not adequately cover the vast
range of possible system conditions. It is impractical to test an
adequate portion of such combinations using conventional
approaches.
(Spec. 2,ll. 1-7).

Appeal 2008-000693
Application 101132,492
Appellants' Invention
4. 	According to Appellants, "[tlhe present invention concerns an
apparatus comprising a system configuration generator, a system builder and
a simulation verification environment." (Spec. 2,ll. 14-16).
5. 	"The system builder may be configured to build a system level
netlist in response to the random system configuration file." (Spec. 2,
6. 	Referring to FIG. 1, a block diagram of a circuit (or system)
100 is shown in accordance with a preferred embodiment of the present
invention. The system 100 is shown comprising a system builder block (or
circuit) 104. (Spec. 4,ll. 5-7 and 12-14).
7. 	Appellants state:
The system builder block 104 may have an input 114 that
may receive the signal SCF and an output 116 that may present
a number of signals (e.g., SLN and SP). The signal SLN may be
a system level netlist. The signal SP may be system parameters.
The parameters SP may represent specific system parameters
according to a particular configuration of the variable and
complex system under test as indicated by the SCF.
(Spec. 5,ll. 3-9).
8. 	Appellants state:
The system builder block 104 may generate the system level
netlist SLN and the system parameters SP of the system
described by the system configuration file SCF. The system
level netlist SLN and the system parameters SP may then be
presented to the SVE 106.
(Spec. 9,ll. 3-7).

Appeal 2008-000693
Application 101132,492
9. 	"Referring to FIG. 3, an [sic] process (or method) 200
illustrating an operation of the system 100 is shown." (Spec. 10,ll. 8-9).
10. 	Appellants state:
While in the state 208, the process 200 may receive a high-level
system file and a verification test file (e.g., the system builder
104 may receive the file SCF). While in the state 210, the
process 200 may build a detailed configuration file using the
high-level system configuration file and component pinout
(e.g., the system builder 104 may generate the netlist SLN and
the system parameters SP).
(Spec. 10,l. 18, through Spec. 11,l. 3).
11. 	Appellants state:
The function performed by the system 100 of FIGS. 1, 2
and 3 may be implemented using a conventional general
purpose digital computer programmed according to the
teachings of the present specification, as will be apparent to
those skilled in the relevant art(s).
(Spec. 12,l. 18, through Spec. 13,l. 1).
12. 	Further, Appellants state:
Appropriate software coding can readily be prepared by skilled
programmers based on the teachings of the present disclosure,
as will also be apparent to those skilled in the relevant art(s).
(Spec. 13,ll. 1-4).
13. 	Appellants state:
The present invention thus may also include a computer
product which may be a storage medium including instructions
which can be used to program a computer to perform a process
in accordance with the present invention. The storage medium
can include, but is not limited to, any type of disk including
floppy disk, optical disk, CD-ROM, and magneto optical disks,
ROMs, RAMS, EPROMs, EEPROMs, Flash memory, magnetic

Appeal 2008-000693
Application 101132,492
or optical cards, or any type of media suitable for storing
electronic instructions.
(Spec. 13,ll. 10-17).
V. APPARATUS CLAIM 10 - NEW GROUNDS OF REJECTION
A. Rejection of Apparatus Claim 10
Under 35 U.S.C. § 112, Second Paragraph
(1)
Introduction
Using our authority under 37 C.F.R. 5 41.50(b), we reject apparatus
claim 10 under 35 U.S.C. 5 112, second paragraph, as being indefinite.
(2)
Principles Of Law
( 4
Claim Construction
During prosecution, "the PTO gives claims their 'broadest reasonable
interpretation."' In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
The USPTO is not required in the course of prosecution to interpret
claims in the same manner as courts are required to during infringement
proceedings.
It would be inconsistent with the role assigned to the
PTO in issuing a patent to require it to interpret claims in the
same manner as judges who, post-issuance, operate under the
assumption the patent is valid.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.1997).
The question then is whether the PTO's interpretation of the disputed
claim language is "reasonable." Id. at 1055.

Appeal 2008-000693
Application 101132,492
(b)
35 U.S.C. 	112
It has long been understood that a patent must describe the
exact scope of an invention and its manufacture to 'secure to
[the patentee] all to which he is entitled, [and] to apprise the
public of what is still open to them.' McClain v. Ortrnayer, 141
U.S. 419,424, 12 S.Ct. 76,77, 35 L.Ed. 800 (1891). Under the
modern American system, these objectives are served by two
distinct elements of a patent document. First, it contains a
specification describing the invention "in such full, clear,
concise, and exact terms as to enable any person skilled in the
art ... to make and use the same." 35 U.S.C. 5 112. Second, a
patent includes one or more "claims," which "particularly
poin[t] out and distinctly clai[m] the subject matter which the
applicant regards as his invention." 35 U.S.C. 5 112.
Markrnan v. Westview Instruments, Znc., 5 17 U.S. 370, 373 (1996) (citation
omitted).
( 4
35 U.S.C. § 112, Second Paragraph
The test for definiteness under 35 U.S.C. 5 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." 	Orthokinetics, Znc. v. Safety
Travel Chairs, Znc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
(dl
35 U.S.C. § 112, Sixth Paragraph
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in

Appeal 2008-000693
Application 101132,492
support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. 5 112, sixth paragraph.
The sixth paragraph of 35 U.S.C. 5 112 has just as much application
during proceedings before the U.S. Patent and Trademark Office as it does
in district court cases for infringement matters. In re Donaldson Co., 16
F.3d 1189, 1193 (Fed. Cir. 1994) (in banc).
It is necessary to decide on an element by element basis whether 35
U.S.C. 5 112, sixth paragraph, applies. Not all terms in a means-plus-
function or step-plus-function clause are limited to what is disclosed in the
written description and equivalents thereof, since 35 U.S.C. 5 112, sixth
paragraph, applies only to the interpretation of the means or step that
performs the recited function. See, e.g., ZMS Technology Znc. v. Haas
Automation Znc., 206 F.3d 1422 (Fed. Cir. 2000) (the term "data block" in
the phrase "means to sequentially display data block inquiries" was not the
means that caused the sequential display, and its meaning was not limited to
the disclosed embodiment and equivalents thereof.).
"An element of a claim described as a means for performing a
function, if read literally, would encompass any means for performing the
function. But section 112 ¶ 6 operates to cut back on the types of means
which could literally satisfy the claim language." Johnston v. ZVAC Corp.,
885 F.2d 1574, 1580 (Fed. Cir. 1989) (citations omitted).
"Properly understood section 112 ¶ 6 operates more like the reverse
doctrine of equivalents than the doctrine of equivalents because it restricts
the scope of the literal claim language." Id.

Appeal 2008-000693
Application 101132,492
"[Tlhe 'broadest reasonable interpretation' that an examiner may give
means-plus-function [or step-plus-function] language is that statutorily
mandated in paragraph six." In re Donaldson Co., 16 F.3d at 1194-95.
When a claim uses the term "means" to describe a limitation, a
presumption inheres that the inventor used the term to invoke 5 112,
¶ 6. Altiris, Znc. v. Syrnantec Corp., 3 18 F.3d 1363, 1375 (Fed. Cir.
2003). "This presumption can be rebutted when the claim, in addition
to the functional language, recites structure sufficient to perform the
claimed function in its entirety." Id.
As the court set forth in LG Electronics:
" '[A] claim term that does not use 'means' will trigger the
rebuttable presumption that 5 112 ¶ 6 does not apply.' "
This presumption can be rebutted "by showing that the
claim element recite[s] a function without reciting
sufficient structure for performing that function."
LG Electronics, Znc. v. Bizcorn Electronics, Znc., 453 F.3d 1364, 1372
(Fed. Cir. 2006) (citations omitted).
This presumption that 5 112 ¶ 6 does not apply is overcome when
there is "no structural context for determining the characteristics of the
[claim element] other than to describe its function." Welker Bearing Co. v.
PHD, Znc. 550 F.3d 1090, 1096 (Fed. Cir. 2008). For example, "the
unadorned term 'mechanism' is 'simply a nonce word or a verbal construct
that is not recognized as the name of structure and is simply a substitute for
the term 'means for.' ' " Id. (quoting Lighting World, Znc. v. Birchwood
Lighting, Znc., 382 F.3d 1354, 1360 (Fed. Cir. 2004)).

Appeal 2008-000693
Application 101132,492
(el
Aristocrat
Recently in Aristocrat, 521 F.3d 1328, the court set forth that for a
claim to a programmed computer, a particular algorithm may be the
corresponding structure under 5 112, sixth paragraph:
For a patentee to claim a means for performing a particular
function and then to disclose only a general purpose computer
as the structure designed to perform that function amounts to
pure functional claiming. Because general purpose computers
can be programmed to perform very different tasks in very
different ways, simply disclosing a computer as the structure
designated to perform a particular function does not limit the
scope of the claim to "the corresponding structure, material, or
acts" that perform the function, as required by section 112
paragraph 6.
Id. at 1333. The court went on to point out:
Thus, in a means-plus-function claim "in which the disclosed
structure is a computer, or microprocessor, programmed to
carry out an algorithm, the disclosed structure is not the general
purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm." 	[WMS
Gaming, Inc. v. International Game Technology, 184 F.3d
1339, 1349 (Fed. Cir. 1999).]
Id.
The court in [Harris Corp.] characterized the rule of WMS
Gaming as follows: "[Tlhe corresponding structure for a 5 112
¶ 6 claim for a computer-implemented function is the algorithm
disclosed in the specification." [Harris Corp. v. Ericsson Inc.,
417 F.3d 1241, 1249 (Fed. Cir. 2005).]
Id.

Appeal 2008-000693
Application 101132,492
In Aristocrat, the court found that a mere reference to using
"appropriate programming" imposed no limitation whatever on the structure
corresponding to the three functions performed by the claimed "game
control means", as any general purpose computer must be programmed. Id.
at 1334. The court further found that the language of claim 1 referring to
"the game control means being arranged to pay a prize when a
predetermined combination of symbols is displayed in a predetermined
arrangement of symbol positions selected by a player" simply describes the
function to be performed and not the algorithm by which it is performed. Id.
The court further found that the language in claim 1 that recites "defining a
set of predetermined arrangements for a current game comprising each
possible combination of the symbol position selected by the player which
have one and only one symbol position in each column of the display
means" is merely a mathematical expression that describes the outcome of
performing the function and not a means for achieving that outcome. Id.
Thus, the court held that Aristocrat failed to disclose the algorithms
that transform the general purpose microprocessor to a special purpose
computer programmed to perform the disclosed algorithm. Id. at 1335.
See also Exparte Catlin, 90 USPQ2d 1603 (BPAI 2009) (precedential).
(0
Blackboard
In Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir.
2009), the court repeated its Aristocrat concerns with respect to the failure to
provide a corresponding structure required under 5 112, sixth paragraph:

Appeal 2008-000693
Application 101132,492
That ordinarily skilled artisans could carry out the recited
function in a variety of ways is precisely why claims written in
"means-plus-function" form must disclose the particular
structure that is used to perform the recited function. By failing
to describe the means by which the access control manager will
create an access control list, Blackboard has attempted to
capture any possible means for achieving that end. Section 112,
paragraph 6, is intended to prevent such pure functional
claiming. Aristocrat, 521 F.3d at 1333.
Blackboard, 574 F.3d at 1385.
(3)
§ 112(2)Rejection of Claim 10
Independent claim 10 recites four means plus function elements. A
presumption arises that the Appellants used the term "means" in claim 10 to
invoke 35 U.S.C. 5 112, sixth paragraph.
The functions recited in the elements of claim 10 are "generating a
random system configuration file of a structurally variable and complex
system," "(i) building a system level netlist and (ii) generating system
parameters in response to said random system configuration file," "verifying
said structurally variable and complex system in response to said system
level netlist," and "providing automatic random verification of said
structurally variable and complex system in response to said system
configuration file." Claim 10 does not recite any structure that would
perform these claimed functions in their entirety. As such, the presumption
that 5 112, sixth paragraph, applies is not rebutted by structure recited in the
claim.
Our rules require that the Appeal Brief contain:
For each independent claim involved in the appeal and for each
dependent claim argued separately under the provisions of

Appeal 2008-000693
Application 101132,492
paragraph (c)(l)(vii) of this section, every means plus function
and step plus function as permitted by 35 U.S.C. 5 112, sixth
paragraph, must be identified and the structure, material, or acts
described in the specification as corresponding to each claimed
function must be set forth with reference to the specification by
page and line number, and to the drawing, if any, by reference
character.
37 C.F.R. 5 41.37(c)(l)(v). Thus, we consult the Appellants' Summary of the
Claimed Subject Matter in the Appeal Brief to assess whether the
Specification describes structure, material, or acts corresponding to the
functions recited in claim 10.
The Appellants describe the subject matter of claim 10 as follows:
A second embodiment of the present invention (as
represented by claim 10) concerns an apparatus comprising the
means for generating a system configuration file (102) of a
structurally variable and complex system; means for building a
system level netlist (104) in response to the random system
configuration file (SCF); means for verifying the structurally
variable and complex system (e.g., page 4, lines 5- 11) in
response to said system level netlist (SLN); and means for
providing automatic random verification of the structurally
variable and complex system in response to the system
configuration file.
(App. Br. 4-5).
The cited portion of the Appellants' Specification describes generally
that the system 100 may provide automated random verification of complex
and structurally variable systems. However, the cited portion of the
Specification does not provide an algorithm by which the system is able to
perform the functions recited in claim 10 to provide automated random
verification of complex and structurally variable systems.

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Application 101132,492
In addition to the specific portion of the Specification identified by the
Appellants in the Appeal Brief, we have thoroughly reviewed the
Appellants' Specification and have not been able to locate an adequate
disclosure of structure, material, or acts corresponding to the functions of
c 6 generating," "building and generating," "verifying," and "providing" as
recited in claim 10. In particular, the Specification does not disclose any
specific algorithm that could be implemented on a general purpose computer
to provide automated random verification of complex and structurally
variable systems. Exemplary of this is Appellants' lack of disclosure of how
to implement the "building and generating" functions. (See FFs 5-8 and 10).
Similar to the "appropriate programming" discussed in Aristocrat, 521 F.3d
at 1334, Appellants merely indicate that "[alppropriate software coding can
readily be prepared by skilled programmers" (FF 12). Accordingly, the
Specification fails to disclose the algorithms that transform the general
purpose processor to a special purpose computer programmed to perform the
disclosed functions of the elements of claim 10.
The Appellants have failed to disclose any algorithm, and thus have
failed to adequately describe sufficient structure, for performing the
functions recited in the means elements contained in claim 10 so as to render
the claim definite. Accordingly, claim 10 is unpatentable under 35 U.S.C.
5 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at 1333.

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Application 101132,492
VI. APPARATUS CLAIMS 1-4,6-9,19, AND 20
- NEW GROUNDS OF REJECTION
A. Rejection of Apparatus Claims 1-4, 6-9, 19, and 20,
Under 35 U.S.C. § 112, Second Paragraph
(1)
Introduction
Using our authority under 37 C.F.R. 5 41.50(b), we reject apparatus
claims 1-4, 6-9, 19, and 20, under 35 U.S.C. 5 112, second paragraph, as
being indefinite.
(2)
§ 112(2)Rejection of Claims 1-4, 6-9, 19, and 20
( 4
Claim Construction
Independent claim 1 (and dependent claims 2-4,6-9, 19, and 20)
contains no elements which Appellants have identified in the Appeal Brief
as being a "means plus function." Such identification is required by
37 C.F.R. 5 41.37(c)(l)(v). Thus, Appellants have in effect indicated that
claims 1-4, 6-9, 19, and 20 are not intended to contain any "means plus
function" elements despite the format of any individual claim element.
The three elements of claim 1 are a "system configuration generator
configured to generate a random system configuration file of a structurally
variable and complex system," "system builder configured to (i) build a
system level netlist and (ii) generate system parameters," and "simulation
verification environment configured to verify said structurally variable and
complex system in response to said system level netlist" respectively. Here,

Appeal 2008-000693
Application 101132,492
each of the claim elements begins with a term followed by functional
language. We agree that the claim elements do not use the term "means"
which would normally indicate that the claim element is intended to be a
"means plus function" element. This absence of the term "means" triggers a
rebuttable presumption that 5 112 ¶ 6 does not apply.
However, this does not end our claim construction analysis as to these
claim terms, i.e., "system configuration generator," "system builder," and
"simulation verification environment." We must determine "whether the
term is one that is understood to describe structure, as opposed to a term that
is simply a nonce word or a verbal construct that is not recognized as the
name of structure and is simply a substitute for the term 'means for.' "
Lighting World, 382 F.3d at 1360. As the Federal Circuit stated in Lighting
World:
In Greenberg and subsequent cases, we have looked to
the dictionary to determine if a disputed term has achieved
recognition as a noun denoting structure, even if the noun is
derived from the function performed. See Greenberg, 91 F.3d at
1583 ("Dictionary definitions make clear that the noun 'detent'
denotes a type of device with a generally understood meaning
in the mechanical arts, even though the definitions are
expressed in functional terms."); Linear Tech. Corp., 379 F.3d
at 1311 (technical dictionary makes clear that "circuit" is
structural); CCS Fitness, 288 F.3d at 1369 (dictionary
definitions consulted to determine that an artisan of ordinary
skill would understand the term in question to have an ordinary
meaning); Personalized Media Communications, 161 F.3d at
704 (same).

Appeal 2008-000693
Application 101132,492
We have looked to both general and subject matter specific
dictionaries4 and we find no evidence that any of these terms have achieved
recognition as a noun denoting structure. Therefore, based upon our
consultation of dictionaries, a review of the record before us, and a search of
the prior art patents in this field, we conclude that none of these three terms
is an art-recognized structure to perform the claimed function, and claim 1
does not recite any other structure that would perform these claimed
functions.
Nor does the specification provide a description sufficient to inform
one of ordinary skill in the art the meaning of the term. Since Appellants
have urged the Board that these claim elements represent the advancement
over the prior art (Spec. 2-3; App. Br. 4) and argued that the prior art fails to
teach such "system configuration generator" or "system builder" elements
(App. Br. 7-8), the prosecution history supports a conclusion that these terms
are used to connote structures unknown in the art. Thus, unlike, for
example, the term "detector" as used in the claim at issue in Personalized
Media Communications, LLC v. International Trade Commission, 161 F.3d
696 (Fed. Cir. 1998), we have no basis for concluding that these terms evoke
for one of ordinary skill in the art either a particular structure or a variety of
structures. Instead, like the phrase "lever moving element" addressed in
Mas-Hamilton Group v. LaGard, Znc., 156 F.3d 1206 (Fed. Cir. 1998), these
terms do not denote devices that take their names from the functions being
4 Microsoft Computer Dictionary, Microsoft Press, 5thedition, 2002;
Computer Science and Communications Dictionary, Volume 2 By Martin H.
Weik, 2000; The American Heritage Dictionary of the English Language, 4th
edition, 2006.

Appeal 2008-000693
Application 101132,492
performed or have a generally understood relevant meaning in the art.
Rather, they could mean every conceivable means of performing the
function.
Therefore, we conclude there is no structural context for determining
the characteristics of these claim elements other than to describe the function
of each element. We further conclude that these claim elements are verbal
constructs that are not recognized as the name of a structure and are simply a
substitute for the term "means for."5
(b)
Rejection Under § 112(2)
For independent claim 1, we have concluded that the "system
configuration generator," "system builder," and "simulation verification
environment" elements of claim 1 are limited under 5 112, sixth paragraph,
as "means plus function" elements. Given such treatment, a rejection under
35 U.S.C. 5 112, second paragraph is appropriate for this claim. Aristocrat,
521 F.3d 1328.
Independent claim 1 recites three means plus function elements in the
form of "a system configuration generator configured to generate,"
"a system builder configured to (i) build . . . and (ii) generate," and
"a simulation verification environment configured to verify . . . [and]
configured to provide".
5 The Board may determine that a claim limitation falls within the scope of
35 U.S.C. 5 112, sixth paragraph. See MPEP 2181 ("[Tlhe phrase 'means
for' or 'step for' was not used but either the Board or courts nevertheless
determined that the claim limitation fell within the scope of 35 U.S.C. 112,
sixth paragraph.")

Appeal 2008-000693
Application 101132,492
The functions recited in the three elements of claim 1 are
"generat[ing] a random system configuration file of a structurally variable
and complex system," "(i) build[ing] a system level netlist and (ii)
generat[ing] system parameters in response to said random system
configuration file," and "verify[ing] said structurally variable and complex
system in response to said system level netlist" and "provid[ing] automatic
random verification of said structurally variable and complex system in
response to said system configuration file."
We repeat that our rules require that the Appeal Brief contain:
For each independent claim involved in the appeal and for each
dependent claim argued separately under the provisions of
paragraph (c)(l)(vii) of this section, every means plus function
and step plus function as permitted by 35 U.S.C. 5 112, sixth
paragraph, must be identified and the structure, material, or acts
described in the specification as corresponding to each claimed
function must be set forth with reference to the specification by
page and line number, and to the drawing, if any, by reference
character.
37 C.F.R. 5 41.37(c)(l)(v). Thus, we consult the Appellants' Summary of the
Claimed Subject Matter in the Appeal Brief to assess whether the
Specification describes structure, material, or acts corresponding to the
functions recited in claim 1.
The Appellants describe the subject matter of claim 1 in the Appeal
Brief as follows:
A first embodiment of the present invention (as
represented by claim 1) concerns an apparatus comprising a
system configuration generator (102), a system builder (104),
and a simulation verification environment (106). The system
configuration generator (102) may be configured to generate a
random system configuration file (SCF in FIG. 1) of a

Appeal 2008-000693
Application 101132,492
structurally variable and complex system (e.g., page 4, lines
5-1 1). The system builder (104) may be configured to build a
system level netlist (SLN in FIG. 1) in response to the random
system configuration file (SLF). The simulation verification
environment (106) may be configured to verify the structurally
variable and complex system in response to the system level
netlist (SLN). The simulation verification environment (106)
may be configured to provide automatic random verification of
the structurally variable and complex system in response to the
random system configuration file (SLF).
(App. Br. 4).
The cited portion of the Appellants' Specification describes generally
that the system 100 may provide automated random verification of complex
and structurally variable systems. However, the cited portion of the
Specification does not provide an algorithm by which the system is able to
perform the functions recited in claim 1 to provide automated random
verification of complex and structurally variable systems.
In addition to the specific portion of the Specification identified by the
Appellants in the Appeal Brief, we have thoroughly reviewed the
Appellants' Specification and have not been able to locate an adequate
disclosure of structure, material, or acts corresponding to the functions of
c 6 generating," "building and generating," "verifying," and "providing" as
recited in claim 1. In particular, the Specification does not disclose any
specific algorithm that could be implemented on a general purpose computer
to provide automated random verification of complex and structurally
variable systems. Exemplary of this is Appellants' lack of disclosure of how
to implement the "building and generating" functions. (See FFs 5-8 and 10).
Accordingly, the Specification fails to disclose the algorithms that transform

Appeal 2008-000693
Application 101132,492
the general purpose processor to a special purpose computer programmed to
perform the disclosed functions of the elements of claim 1.
The Appellants have failed to disclose any algorithm, and thus have
failed to adequately describe sufficient structure, for performing the
functions recited in the means elements contained in claim 1 so as to render
the claim definite. Accordingly, claim 1 is unpatentable under 35 U.S.C.
5 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at 1333.
In addition, as with the "access control manager" discussed in
Blackboard, 574 F.3d at 1382-84, the means plus function elements of
claim 1 are simply abstractions that describe the function of the
system, each function which is performed by some undefined
component of the system. In Blackboard, the claims at issue recited a
"means for assigning a level of access." The patentee asserted that the
structure disclosed in the specification corresponding to the recited
function of "assigning a level of access" was an "access control
manager." The court found, however, that the specification failed to
provide any structure corresponding to the access control manager;
instead, the specification merely described a "black box that performs
the recited function." Similarly here (although the elements "system
configuration generator," "system builder," and "simulation
verification environment" are in Appellants' claim rather than the
specification), the elements are essentially a black box that performs a
recited function. But how each does so is left undisclosed. The
specification contains no description of the structure or the process
that these elements use to perform their functions. Nor have

Appeal 2008-000693
Application 101132,492
Appellants ever suggested that these elements represents a particular
structure defined other than as any structure that performs the recited
function. Nor have Appellants ever suggested that these elements are
a known structure in the prior art. In fact, as noted supra in Section
VI (A)(2)(a), Appellants argue that these elements are of their
invention and not known in the prior art.
Claims 2-4, 6-9, 19, and 20, depend from claim 1. These claims
incorporate the same problem by that dependency.
B. Rejection of Apparatus Claims 1-4, 6-9, 19, and 20
Under 35 U.S.C. § 112, First Paragraph
(1)
Introduction
For independent claim 1, using our authority under 37 C.F.R.
5 41.50(b), we reject apparatus claims 1-4, 6-9, 19, and 20 under
35 U.S.C. 5 112, first paragraph, as not being enabled for the scope of the
claims.
We have found supra that the recitation of a "system configuration
generator," "system builder," and "simulation verification environment" do
not recite definite structure. Also, we have concluded supra that for these
claim elements 5 112, sixth paragraph does apply (i.e., the presumption that
5 112, sixth paragraph does not apply has been rebutted for these claim
elements).
In addition, if 5 112, sixth paragraph does not apply to these
claim limitations, then we make an alternative rejection of claims 1-4,

Appeal 2008-000693
Application 101132,492
6-9, 19, and 20 for lack of enablement under 5 112, first paragraph
because the claim elements are purely functional (i.e., there is no
particular structure to support the function being performed).
(2)
Principles of Law
( 4
Scope of Enablement
Section 112 requires that the patent specification enable "those
skilled in the art to make and use the full scope of the claimed
invention without 'undue experimentation' " in order to extract
meaningful disclosure of the invention and, by this disclosure,
advance the technical arts. Koito Mfg. [Co., Ltd. v. Turn-Key-
Tech, LLC], 381 F.3d [I1421 at 1155 [(Fed. Cir. 2004)l
(quoting Genentech, Znc. v. Novo Nordisk A , , 108 F.3d 1361,
1365 (Fed.Cir. 1997) (citation omitted)). Because such a
disclosure simultaneously puts those skilled in the art on notice
of the enforceable boundary of the commercial patent right, the
law further makes the enabling disclosure operational as a
limitation on claim validity. "The scope of [patent] claims must
be less than or equal to the scope of the enablement. The scope
of enablement, in turn, is that which is disclosed in the
specification plus the scope of what would be known to one of
ordinary skill in the art without undue experimentation." Nat'l
Recovery [Techs., Znc. v. Magnetic Separation Sys., Znc. 1, 166
F.3d [I1901 at 1196 [(Fed. Cir. 1999)l; see also In re Goodman,
11 F.3d 1046, 1050 (Fed.Cir. 1993) (" [Tlhe specification must
teach those of skill in the art 'how to make and how to use the
invention as broadly as it is claimed'."); In re Fisher, 57
C.C.P.A. 1099,427 F.2d 833, 839 (1970) ("[Tlhe scope of the
claims must bear a reasonable correlation to the scope of
enablement provided by the specification to persons of ordinary
skill in the art.").

Appeal 2008-000693
Application 101132,492
Znvitrogen Corp. v. Clontech Labs. Znc, 429 F.3d 1052, 1070-71 (Fed. Cir.
2005) (footnote omitted).
(b)
Undue Experimentation - Wands Factors
Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached
by weighing many factual considerations.
In re Wands, 858 F.2d at 737.
The Wands factors include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In reviewing for lack of enablement, the Wands court elected to
consider "all of the factors." Id. at 740. However, it is not necessary to
review all the Wands factors to find a disclosure enabling. Rather, the
Wands factors "are illustrative, not mandatory" and what is relevant to an
enablement determination depends upon the facts of the particular case. See
Amgen, Znc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991).
See also Enzo Biochem, Znc. v. Calgene, Znc., 188 F.3d 1362, 1373
(Fed. Cir. 1999) and Warner-Lambert Company v. Teva Pharmaceuticals
USA, Znc., 418 F.3d 1326, 1337 (Fed. Cir. 2005).

Appeal 2008-000693
Application 101132,492
( 4
Functional Claiming versus 35 U.S. C. § 112, sixth paragraph,
35 U.S.C. 5 112, sixth paragraph, when enacted, was a statutory
response to the Supreme Court's decision in Halliburton Oil Well
Cementing Co. v. Walker, 329 U.S. 1 (1946). In ~ a l l i b u r t o n , ~	the
Supreme Court held invalid an apparatus claim on the ground that it
used "means-plus-function" term which was purely functional. Such
a claim was improper because the means term with a stated function
merely described a particular end result, did not set forth any specific
structure, and would encompass any and all structures for achieving
that result, including those which were not what the applicant had
invented.
In Greenberg, the Court of Appeals for the Federal Circuit
stated:
As this court has observed, "[tlhe record is clear on why
paragraph six was enacted." In re Donaldson Co., 16 F.3d
1189,1194,29 USPQ2d 1845,1849 (Fed. Cir. 1994)(in banc).
In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1,
7 1 USPQ 175 (1946), the Supreme Court held invalid a claim
that was drafted in means-plus-function fashion. Congress
enacted paragraph six, originally paragraph three, to overrule
that holding. In place of the Halliburton rule, Congress adopted
a compromise solution, one that had support in the pre-
Halliburton case law: Congress permitted the use of purely
functional language in claims, but it limited the breadth of such
claim language by restricting its scope to the structure disclosed
6 Halliburton was the culmination of a long line of cases dealing with use of
terms such as "means" and "mechanisms" in claims. See, e.g., A.W. Deller,
Walker on Patents, 5 166, pp. 790-794 (Deller's Edition 1937).

Appeal 2008-000693
Application 101132,492
in the specification and equivalents thereof. See Valmont
Zndus., Znc. v. Reinke Mfg. Co., 983 F.2d 1039, 1041-42, 25
USPQ2d 1451, 1453-54 (Fed. Cir. 1993); In re Fuetterer, 319
F.2d 259,264 n.l1,138 USPQ 217,222 n.11 (CCPA 1963).
(Emphasis added.)
Greenberg v. Ethicon Endo-Surgery Znc., 91 F.3d 1580, 1582 (Fed.
Cir. 1996). As the Federal Circuit explained, the statutory solution
represents only a compromise.
(dl
Halliburton
In Halliburton, the Supreme Court held invalid an apparatus claim on
the ground that it used "conveniently functional language." 329 U.S. at 8.
The apparatus claim of Halliburton used a "means-plus-function"
term which was purely functional. Such a claim was improper because the
means term with a stated function merely described a particular end result,
did not set forth any specific structure, and would encompass any and all
structures for achieving that result, including those which were not what the
applicant had invented.
(el
Continued Applicability of the Halliburton Rule
The Board stated the following in Miyazaki:
Halliburton proscribed purely functional claiming by
prohibiting a patentee from using "broad functional claims" to
"obtain greater coverage by failing to describe his invention
than by describing it as the statute commands." Id. at 12-13.
Miyazaki, 89 USPQ2d at 1216.

Appeal 2008-000693
Application 101132,492
The Board went on to state the following in Miyazaki:
In particular, the Court in Halliburton feared the
"overhanging threat" of the functional claim which "barred
anyone from using in an oil well any device heretofore or
hereafter invented which combined with the [prior art]
machines performs the function of clearly and distinctly
catching and recording echoes from tubing joints with
regularity." [Halliburton, 329 U.S.] at 12. The Court explained
that "ljlust how many different devices there are of various
kinds and characters which would serve to emphasize these
echoes, we do not know." Id. The Court further explained,
In this age of technological development there may be
many other devices beyond our present information or
indeed our imagination which will perform that function
and yet fit these claims. And unless frightened from the
course of experimentation by broad functional claims like
these, inventive genius may evolve many more devices to
accomplish the same purpose.
Id. (citations omitted).
Miyazaki, 89 USPQ2d at 1216.
Functional claim language is permissible only if the scope of the
functional claim language is commensurate in scope with an enabling
disclosure. See In re Boller, 332 F.2d 382, 386-387 (CCPA 1964) (In
considering "whether the claims are 'unduly broad' ", Judge Rich writing for
the court first concluded that as to a functionally claimed volatile
neutralizing agent, ' "we believe that appellant's disclosure, even though of a
limited class of 'volatile neutralizing agents,' is sufficient to justify claims
which define broadly a volatile neutralizing agent"; however, the court also
7 Claim 76 of Boller recited "a volatile neutralizing agent for said residual
carboxyl groups temporarily inhibiting further reaction between the
unreacted portions of said alkyd and the epoxidized ester compound."

Appeal 2008-000693
Application 101132,492
concluded that claims which differ by reciting a functionally claimed
" 'neutralizing agent' broadly without saying it is volatile do not comply
with 35 U.S.C. 5 112."). Therefore, a claim which is limited by its
construction to be commensurate in scope with an enabling disclosure is
enabled, and a claim which is not so limited is not enabled.
In the absence of such a limited construction, the concerns expressed
by the Court in Halliburton are still applicable to prohibit the use of
functional claim language. For claims having functional claim language, we
conclude that we must determine whether the scope of the claim is enabled
as required under 35 U.S.C. 5 112, first paragraph. The breadth of the
functional limitation must be commensurate with the scope of the supporting
disclosure.
(0
Functional Language In and Of Itself
We recognize that functional language does not, in and of itself,
render a claim improper. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971). For example, a composition of matter formed of two specific
components in a certain proportion that is "transparent to infra-red rays and
resistant to thermal shock", although stating the ultimate desired property of
the composition, provides a clear-cut indication of the scope of subject
8 Although in Boller, 332 F.2d 382, the CCPA speaks of undue breadth in
terms of 5 112, second paragraph, in the later decided In re Borkowski, 422
F.2d 904,909 (CCPA 1970), the CCPA makes clear that undue breadth is
instead an issue of enablement under 5 112, first paragraph.

Appeal 2008-000693
Application 101132,492
matter embraced by the claim and does not have a scope of protection
beyond that which is justified by the disclosure. Id.
The issue of the claims before us is distinguished from the claim
found in Swinehart, in that the scope of the functional claim language here
in claim 1 is not enabled to its entire scope. In Swinehart, the claim at issue
recited a composition of barium fluoride and calcium fluoride in
approximately eutectic proportion. Id. at 21 1. Thus, even though the claim
at issue recited the desired property of the composition in functional terms,
the claim nonetheless tied that functional language to a definite structure. In
contrast to the claim in Swinehart, Appellants' claim recites no meaningful
structure. Instead, the scope of the functional claim language of claim 1 is
so broad and sweeping that it includes all structures or means that can
perform the function. It is not limited to any corresponding structure,
material, or act disclosed in the specification and equivalents thereof.
(g)
Federal Circuit and Court of Customs & Patent Appeals Precedent
Our view that functional limitations must be commensurate with the
scope of the supporting disclosure (i.e., must be enabled) is supported by
CCPA and Federal Circuit case law. The CCPA, for example, recognized
that functional language is objectionable when it attempts to extend the
monopoly provided by the claim beyond the scope of invention. In re
Krodel, 223 F.2d 285,289 (CCPA 1955) ("[F]unctional language . . . [is] in
essence . . . an attempt to extend the monopoly beyond the scope of the
We note that there was no challenge in Swinehart that the claim at issue fell
under 5 112, sixth paragraph.

Appeal 2008-000693
Application 101132,492
invention."). While the CCPA later explained that "there is nothing
intrinsically wrong" with functional claiming, it nevertheless acknowledged
that doing so may cause a claim to be so broad that it has "a potential scope
of protection beyond that which is justified by the specification disclosure"
under 35 U.S.C. 5 112. In re Swinehart, 439 F.2d 210,212-13 (CCPA
1971). 	Indeed, the court cautioned,
"Functional" terminology may render a claim quite broad. By
its own literal terms a claim employing such language covers
any and all embodiments which perform the recited function.
Legitimate concern often properly exists, therefore, as to
whether the scope of protection defined thereby is warranted by
the scope of enablement indicated and provided by the
description contained in the specification.
Id. at 213 (emphasis added). The Federal Circuit has also recognized that
the use of functional language may render a claim invalid for lack of
enablement. The Court has explained that an element of a claim recited in
functional terms "covers all embodiments performing the recited function."
Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373,
1384 (Fed. Cir. 2003); see also In re Hauserman, 15 U.S.P.Q.2d 1157, 1989
WL 144145 at *2 (Fed. Cir. 1989) (unpublished) ("'[F]unctional language'
(not to be confused with "means plus function" language under 35 USC 112,
¶ 6) by itself covers any and all embodiments which perform the recited
function.") (emphasis in original). As such, the specification may not enable
the full scope of the functional language of the claim without undue
experimentation. In Monsanto Co. v. Syngenta Seeds, Inc., for example, the
Court held that a broad functional limitation requiring a promoter sequence
to function in all plant cells was not enabled because, at the time the patent

Appeal 2008-000693
Application 101132,492
at issue was filed, it was not possible to insert the promoter sequence into all
types of plant cells. 503 F.3d 1352, 1361-62 (Fed. Cir. 2007). Similarly, in
In re Vaeck, the Court upheld the Board's finding that a functional limitation
requiring a claimed gene to function in all Cyanobacteria cells was not
enabled because Cyanobacteria comprised approximately 150 different
genera, was poorly studied, and highly unpredictable. 947 F.2d 488,493,
495-96 (Fed. Cir. 1991).
(3)
§ 112(1)Rejection Analysis
In the present case, as discussed supra, we are presuming that despite
the lack of structure in the claims, it is not proper to perform claim
construction under 112, ¶ 6 paragraph. That is, the "system configuration
generator configured to generate," "system builder configured to (i) build
. . . and (ii) generate," and "simulation verification environment configured
to verify" elements of claim 1 do not require claim interpretation under
5 112, sixth paragraph.10 As such, the result would be that these three
elements are each a functional recitation in that there is no structure
presented in the claim element itself, and we are not required to import
structure from the Specification into the claim under 35 U.S.C. 5 112, sixth
paragraph. These claim elements are purely functional.
We focus on the functional claim language of the "system builder" of
claim 1. As discussed supra in Section VI.A.(2)(b), "the Specification does
10 Contrast claim 1 to claim 10 which is written as a series of means-plus-
function elements, which is of much more limited scope, and which is not
rejected for lack of enablement.

Appeal 2008-000693
Application 101132,492
not disclose any specific algorithm that could be implemented on a general
purpose computer to provide automated random verification of complex and
structurally variable systems." More particularly, Appellants' disclosure
lacks even a single embodiment showing how to implement the "system
builder" and its functions. (See FFs 5-8 and 10).
Further, as discussed supra in Section VI.A.(2), "system builder" is
not a term which has achieved recognition as a noun denoting structure,
Appellants argued that the prior art fails to teach such a "system builder"
element, and Appellants do not suggest that these elements represent a
particular structure defined other than as any structure that performs the
recited function (i.e., it is essentially a black box that performs the recited
function). We reiterate our conclusion that Appellants' "system builder" is
not a definite structure. Therefore, if the "system builder" element is not a
means to which 5 112, sixth paragraph is applicable, then it is simply an
element defined solely by the function being performed (i.e., a purely
functional element unlimited by any particular structure).
We now look to pertinent Wands factors. We find that as to Wands
factor ( 3 , "the state of the prior art" with regard to the "system builder"
element is that this element is not known in the prior art. 	Appellants point
out that a "system builder" is part of the invention of claim 1 (Spec. 2 and
App. Br. 4). Appellants go on to argue that the prior art fails to describe
such a system builder. (App. Br. 7-8). Thus, Appellants have admitted
through their argument that the "system builder" is not known in the prior
art.

Appeal 2008-000693
Application 101132,492
We additionally find that as to Wands factor (8), "the breadth of the
claims" with regard to the "system builder" element is unbounded as it
encompasses every means of accomplishing the "build" and "generate"
functions of the "system builder". We also find that as to Wands factor (2),
"the amount of direction and guidance presented" by Appellants is minimal;
and as to Wands factor (3), there are no "working examples" presented by
Appellants in their Specification.
We find before us an extremely broad claim element directed to a
highly complex invention for which no working examples have been
provided by Appellants. Further, Appellants also argue that working
examples of this element are not found in the prior art. Based on Wands
factors (2), (3), ( 3 , and most particularly (8) (unbounded claim breadth), the
weight of which is so heavy towards undue experimentation that it cannot be
overcome by any mitigating Wands factors, we conclude that Appellants'
Specification does not enable those skilled in the art to make and use the full
scope of the claimed invention without undue experimentation.
That is, we conclude that the "system builder" limitation encompasses
any and all structures or acts for achieving its result, including those which
were not what the applicant had invented. As such, this claim is
unpatentable under 35 U.S.C. 5 112, first paragraph, for lack of an enabling
disclosure commensurate with the scope of the claims.
With this opinion we do not mean to imply that all functional
language will violate the Halliburton rule as it does here. We note
that functional claim language tied to a definite structure in the claim
(as in the claim at issue in Swinehart) is unlikely to give rise to an

Appeal 2008-000693
Application 101132,492
enablement rejection where a person of ordinary skill in the art would
likely know how to make and use the embodiments that give rise to
the structure. However, in this case and those like it, the purported
"structures" in the claims are essentially black boxes not connoting
any structure to the skilled artisan, and are merely circularly defined
by their desired functions. For the reasons expressed above, these
"structures" are not enabled and are properly rejected under 5 112,
first paragraph.
Claims 2-4, 6-9, 19, and 20, depend from claim 1. These claims
incorporate the same problem by that dependency and fail to resolve the
problem through the recitation of a specific device for performing the
functions of the "system builder."
VII. METHOD CLAIMS 11- 17 - NEW GROUND OF REJECTION
A. Rejection of Method Claims 11-1 7
Under 35 U.S.C. § 112, First Paragraph
(1)
Introduction
Using our authority under 37 C.F.R. 5 41.50(b), we reject method
claims 11-17 under 35 U.S.C. 5 112, first paragraph, as not being enabled
for the scope of the claims.
(2)
Principles of Law
See Principles of Law Sections VI.B.(2)(a) and (b) supra covering
Scope of Enablement and Undue Experimentation - Wands Factors.

Appeal 2008-000693
Application 101132,492
(3)
Analysis
( 4
Claims Construction
As a preliminary matter, we address the construction of method
claims 11-17. Claim 11 is exemplary (reproduced supra). Appellants'
claim 11 recites "[a] method for automated random verification of
structurally variable and complex systems."
We find that step (A) of claim 11 recites "generating a random
system configuration file of said system." Appellants define a system
configuration file (SCF) in their disclosure as a file which "may specify a
randomly generated system composed of bus functional models, target
modules, and their respective interconnections." (Spec. 8,l. 21 through
Spec. 9,l. 2).
We find that step (B) of claim 11 recites "generating one or more
parameters of said system in response to said random system configuration
file." Appellants indicate that the parameters may represent specific system
parameters according to a particular configuration of the variable and
complex system under test as indicated by the SCF. (Spec. 5,ll. 6-9).
We find that step (C) of claim 11 recites "generating a system level
netlist of said system in response to said random system configuration file."
Appellants do not define a netlist in their disclosure; however, it is known in
the art that a netlist is a type of data structure. See ~ e i ~ e r "	at column 1,
11 Geiger US 6,304,837 patented Oct. 16, 2001. These Appellants already
have knowledge of Geiger because a copy of Geiger was previously
provided as part of the examination of co-pending application Serial No.

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Application 101132,492
lines 29-34 ("A netlist is essentially a list of 'nets,' which specify
components (know as 'cells') and their interconnections which are designed
to meet a circuit design's performance constraints. The "netlist" therefore
defines the connectivity between pins of the various cells of an integrated
circuit design.").
(b)
Wands Analysis
We focus particularly on steps (B) and (C) of claim 11. Appellants
point out that a "system builder" is part of the invention of claim 1 (Spec. 2
and App. Br. 4). Appellants point out that step (B) of claim 11 corresponds
to state (208) and step (C) of claim 11 corresponds to state (210). (App.
Br. 5). Appellants disclose that process states (208) and (210) are performed
by the "system builder." (FF 10). Appellants also argue that the prior art
fails to describe such a system builder. (App. Br. 7-8). Appellants further
argue that the prior art fails to describe steps (B) and (C) of claim 11. (App.
Br. 10, 11. 3-1 1).
As discussed supra in Section VI.A.(2)(b), "the Specification does not
disclose any specific algorithm that could be implemented on a general
purpose computer to provide automated random verification of complex and
structurally variable systems." More particularly, Appellants' disclosure
lacks even a single embodiment showing how to implement the "system
builder" and steps (B) and (C). (See FFs 5-8 and 10).
091915,806, referenced at page 1, lines 5-6, of the Specification. The
application on appeal and the co-pending application share three inventors
and shared the same assignee during their examinations. The co-pending
application was abandoned after a prior art rejection based on Geiger.

Appeal 2008-000693
Application 101132,492
Therefore, we find that as to Wands factor (I), "the quantity of
experimentation necessary" is high; as to Wands factor (2), "the amount of
direction and guidance presented" by Appellants is minimal; as to Wands
factor (3), there are no "working examples" presented by Appellants in their
Specification; as to Wands factor (4), "the nature of the invention" is highly
complex as shown by Appellants' description of the significant prior art
failings (Spec. 2: 1-8) and Appellants' indications that their invention will
overcome these failings (Spec.2: 14-3:12); as to Wands factor ( 3 , "the state
of the prior art" is well developed as shown by the Geiger patent cited supra;
as to Wands factor (6), Appellants contend (without further support) that
"the relative skill of those in the art" is high (see FF 11); as to Wands factor
(7), Appellants also contend (without further support) that "the predictability
of the art" is above average (see FF 12); and as to Wands factor (8), "the
breadth of the claims" is very broad as it encompasses every way of
accomplishing the "generating" results of steps (B) and (C).
We have adopted a view of Factors (5)-(7) that is most beneficial to
Appellants. However, the remaining factors run counter to Appellants'
benefit. In particular, we find before us two extremely broad claim steps
directed to a highly complex invention for which no working examples have
been provided by Appellants. Further, Appellants also argue that working
examples of these steps are not found in the prior art. Weighing all of these
eight factors together, with factors (1)-(4) and (8) weighing towards undue
experimentation and factors (5)-(7) weighing against, we conclude that
Appellants' Specification does not enable those skilled in the art to make

Appeal 2008-000693
Application 101132,492
and use the full scope of the claimed invention without undue
experimentation.
Claims 12-17, depend from claim 11. These claims incorporate the
same problem by that dependency and fail to resolve the problem through
the recitation of specifically how to accomplish the "generating" functions
of steps (B) and (C) of claim 11.
VIII. COMPUTER READABLE MEDIUM CLAIM 18
- NEW GROUNDS OF REJECTION
A. Rejection of "Computer Readable Medium" Claim 18
Under 35 U.S.C. § 112, First Paragraph
(1)
Introduction
Using our authority under 37 C.F.R. 5 41.50(b), we reject computer
readable medium claim 18 under 35 U.S.C. 5 112, first paragraph, as not
being enabled for the scope of the claim.
(2)
Analysis
Claim 18 recites: "A computer readable medium configured to
perform the steps (A), (B), (C) and (D) of claim 11". As discussed supra,
we have rejected claim 11 as not being enabled for the scope of the claim
with regard to steps (B) and (C). 	Claim 18 incorporates steps (B) and (C) of
claim 11 and is rejected under 35 U.S.C. 5 112, first paragraph, on the same
basis as claim 11.

Appeal 2008-000693
Application 101132,492
IX. ANALYSIS - EXAMINER'S REJECTIONS
A. Examiner's Rejection of Claims 1-4, 6-10, 19, and 20
We reverse the rejection of claims 1-4, 6- 10, 19, and 20 under 5 102
as being anticipated by Meyer.
A prior art rejection of a claim which is so indefinite that
"considerable speculation as to meaning of the terms employed and
assumptions as to the scope of such claims" is needed, is likely imprudent.
See In re Steele, 305 F.2d at 862 (holding that the examiner and the board
were wrong in relying on what at best were speculative assumptions as to the
meaning of the claims and basing a rejection under 35 U.S.C. 5 103
thereon).
We find it imprudent to speculate as to the scope of (a) the "means"
elements of independent claim 10 or (b) the purely functional claim elements
of independent claim 1, in order to reach a decision on the anticipation of the
claimed subject matter under 5 102. It should be understood, however, that
our decision to reverse this rejection is based on the indefiniteness of the
claimed subject matter and does not reflect on the merits of the underlying
rejection.
B. Examiner's Rejection of Claims 11-17
We reverse the rejection of claims 11-17 under 5 102 as being
anticipated by Meyer.
As discussed supra, we have rejected claims 11-17 under 35 U.S.C.
5 112, first paragraph, as not being enabled for the scope of the claims. In
reaching this conclusion we found it self evident that "the nature of the

Appeal 2008-000693
Application 101132,492
invention" is highly complex and there is no "working example" of steps (B)
and (C) of claim 11 presented by Appellants in the Specification.
During examination, the Examiner set forth an initial prima facie
showing which found that each limitation of claims 11- 17 was described in
Meyer and rejected claims 11-17 under 35 U.S.C. 5 102(b) as being
anticipated by Meyer. (Office Action, Oct. 11, 2005,7-9). In response,
Appellants argued that the prior art failed to describe performing the
functions of steps (B) and (C) of claim 11 (a system builder). (Amendment,
Jan. 17, 2006, 9-11; see also Amendment After Final, Jun. 12, 2006, 8-12).
The Examiner then reached a final conclusion that each limitation of claims
11-17 was described in Meyer and finally rejected claims 11-17 under
35 U.S.C. 5 102(b) as being anticipated by Meyer. (Final Rej., Apr. 10,
2006, 8-10).12
However, we conclude that the facts of Appellants' failure to comply
with the requirements of 35 U.S.C. 5 112 effectively precludes the Office
from properly reaching a final conclusion of anticipation by the prior art.
For this reason, we reverse the Examiner's rejections of claims 11-17 under
35 U.S.C. 5 102(b).
12 An examiner is required to determine patentability on the totality of the
record, by a preponderance of the evidence with due consideration to
persuasiveness of the applicant's arguments. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).

Appeal 2008-000693
Application 101132,492
C. Examiner's Rejection of Claim 18
We reverse the Examiner's rejection of claim 18 under 5 102(b)
as being anticipated by Meyer for the same reasons set forth supra for
claim 11.
X. FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
5 41.50(b) (2007). 37 C.F.R. 5 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review ."
37 C.F.R. 5 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. 	Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under 5 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2009).

Appeal 2008-000693
Application 101132,492
XI. CONCLUSIONS OF LAW
(1) Claims 1-4 and 6-20 are not patentable.
(2) Since we have entered diverse new grounds of rejection, our
decision is not a final agency action.
XII. DECISION
The Examiner's rejection of claims 1-4 and 6-20 is reversed.
We reject claims 1-4, 6-9, and 11-20, under 35 U.S.C. 5 112, first
paragraph.
We reject claims 1-4, 6-10, 19, and 20, under 35 U.S.C. 5 112, second
paragraph.
REVERSED
37 C.F.R. # 41.50(b)
msc
CHRISTOPHER P MAIORANA, PC
LSI Corporation
24840 HARPER
SUITE 100
ST CLAIR SHORES MI 48080