Combined Apparatus/Method Claim Indefinite
Claim 25 recited:
According to the court, it was unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. According to the court:
The system of claim 2 [including an input means] wherein the predicted
transaction information comprises both a transaction type and transaction
parameters associated with that transaction type, and the user uses the input
means to either change the predicted transaction information or accept the
displayed transaction type and transaction parameters.
Whether a single claim covering both an apparatus and a method of use of
that apparatus is invalid is an issue of first impression in this court. The
Board of Patent Appeals and Interferences ("Board") of the PTO, however, has
made it clear that reciting both an apparatus and a method of using that
apparatus renders a claim indefinite under section 112, paragraph 2. Ex parte
Lyell, 17 USPQ2d 1548 (BPAI 1990). As the Board noted in Lyell, "the statutory
class of invention is important in determining patentability and infringement."
Id. at 1550 (citing In re Kuehl, 475 F.2d 658, 665 (CCPA 1973); Rubber Co. v.
Goodyear, 76 U.S. 788, 796 (1870)). The Board correctly surmised that, as a
result of the combination of two separate statutory classes of invention, a
manufacturer or seller of the claimed apparatus would not know from the claim
whether it might also be liable for contributory infringement because a buyer or
user of the apparatus later performs the claimed method of using the apparatus.
Id. Thus, such a claim "is not sufficiently precise to provide competitors with
an accurate determination of the 'metes and bounds' of protection involved" and
is "ambiguous and properly rejected" under section 112, paragraph 2. Id. at
1550-51. This rule is well recognized and has been incorporated into the PTO's
Manual of Patent Examination Procedure. § 2173.05(p)(II) (1999) ("A single claim
which claims both an apparatus and the method steps of using the apparatus is
indefinite under 35 U.S.C. 112, second paragraph."); see also Robert C. Faber,
Landis on Mechanics of Patent Claim Drafting § 60A (2001) ("Never mix claim
types to different classes of invention in a single claim.").