Website "Means" Requires Algorithm Disclosure
In Ex parte Catlin, __ Westlaw __ (U.S. PTO Bd. App. & Int. February 3, 2009)(precedential), the Board held that a method claim for implementing an on-line incentive system that recited "providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant" was invalid for indefiniteness under 35 U.S.C. Section 112, second paragraph, where the application failed to disclose any algorithms that transformed the disclosed general purpose processor to a special purpose computer programmed to perform the disclosed functions:
According to Administrative Patent Judge Horner,
. . . 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 allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity. 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 first elements of claims 1, 9, and 20. The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 1 1 - 19, and 2 1-25 depending therefrom, are unpatentable . . . as indefinite.