Apr 152011

The B.P.A.I. recently decided an interesting case, Ex Parte Dwight Williams, 2009-010882, 2011 WL 1131340 (B.P.A.I. Mar. 28, 2011). The patent application at issue involved a system performing certain methods. The examiner had rejected certain claims as non-statutory subject matter because by combining two types of classes (systems and processes) the invention does not fall in any of the statutory classes. The question for the Board became whether the invention was a system or whether it was a method and if you can combine a system with a method. A representative claim is as follows:

1. A fire fighting system comprising:
pumping at least 2000 gpm water from a large water reservoir toward an industrial hazard using a standard pump having a water manifold inlet but no special approximately 2 1/2 inch inlet; and
adding, in an around-the-pump system, at least one water additive from a water additive source to the pumped water through a fitting at least initially separate from the standard pump, the fitting established on a suction side of the pump upstream of the pump water manifold inlet and in fluid communication between a reservoir outlet and the suction side.

The Board used a dictionary definition of system, which included a method: procedure. Because claims 1, 2, 5-8, 13, 16, and 17 only recited method steps, no structure was claimed. Accordingly, claims 1, 2, 5-8, 13, 16, and 17 were not improper hybrid claims. The Board stressed that a system can have methods as long as structure is not claimed. Therefore, it was “clear that these claims are method claims directed to one of the enumerated statutory classes.”

To me, this case highlights that 101 rejections at the PTO appear to be growing in number and scope. I appreciate that the Board set this point straight. The argument that the examiner made with regards to subject matter made little sense to me. If there were two or more statutory classes in one claim, the rejection should have been based on indefiniteness alone. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (“Because [the claim] recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.”). But 101 should be used to disqualify subject matter when the subject matter does not fit within any class. See In re Nuijten, 515 F.3d 1361 (Fed. Cir. 2008).

 Posted by at 4:38 am

  2 Responses to “Claim Drafting: System claims can be methods”

  1. I agree with your statement that “if there were two or more statutory classes in one claim, the rejection should have been based on indefiniteness alone.” But I also agree with the Board’s finding that this *was not* such a case. This was a claim to a method, despite the nominal use of “system” in the preamble.

    This case seemed like an easy call compared to the “system” claim in Ex parte Miyata which the Board found to be indefinite because it was unclear *what* class the claim belonged to.

    That claim looked a lot like a system claim:
    5. In a video camera system capable of carrying out panning/tilting control of a camera device and capable of displaying a video imaged by the camera device on a monitor as well as superimposing a mask image on an arbitrary area within a range of imaging with the camera device,
    the video camera system being characterized in that
    in a case where the mask image is moved, the size of the mask image is corrected both forward and backward or either forward or backward in the direction of movement, the amount of correction of said mask image is adjusted depending on the movement speed thereof and the amount of correction increases as the movement speed increases.

    Even so, the Board found it was unclear whether the claim was directed to process steps or structure.

    I blogged about Miyata here:


    Trent Reply:

    Interesting case Karen, thanks for sharing. Also, thanks for the link to your blog. I’m always on the lookout for interesting blogs to read.


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