If-Then logic is in most computerized inventions, but the Ex Parte Schulhauser case lets the examiner ignore the “Then” part in your method claims.
When the broadest reasonable interpretation is neither “broadest” nor “reasonable.”
Most computerized inventions, and indeed most powered inventions of any sort, operate by an implied: “If the power is off, nothing happens” scheme. However, if you put this universal fact in a methods-type patent claim, the Ex Parte Schulhause case would allow the examiner to ignore almost all claim elements! Therefore, the invention is inactive in the unpowered case and is obvious given other inactive inventions. The examiner does not have to look at how the claim describes the invention when it is active!
You will probably not try to claim the “on/off switch,” but if your invention operates by standard “If-Then” contingent logic, you often need to describe this logic. Consider a fire alarm. It is mostly inactive, but the invention sounds an alarm if a sensor detects a fire. However, if you try to claim it as “If the sensor detects a fire signal, then trigger the alarm; otherwise, do nothing.” you would be in trouble. The examiner can ignore the “then trigger the alarm” branch.” Lots of things do nothing, so your claimed invention is, yup, obvious again.
What happened here?
In 2008, Schulhauser et al. filed a patent for Medtronic for an “Apparatus and method for detecting cardiac events.” It took a long time to wind its way through the USPTO. In 2012, their examiner took an “I don’t need to read the then” position and rejected it. Medtronic appealed to the Patent Trial and Appeal Board (PTAB). Unfortunately, in the Ex Parte Schulhauser ruling, PTAB upheld the examiner. If you are looking for a detailed justification, you will not find one. PTAB simply asserted that for methods claims, if the conditional steps are mutually exclusive, the remaining method steps need not be analyzed. As the MPEP puts it:
“[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed”
MPEP 2111.04 II. Contingent Limitations
Fortunately, system or device claims still operate by a more rational rule. Here, the MPEP asserts:
[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...however to render the claimed system obvious, the prior art must teach the structure that performs the function of the contingent step.”
MPEP 2111.04 II. Contingent Limitations [Emphasis added]
So, for system or device claims, sanity still prevails.
What were they thinking of?
Since the PTAB’s reasoning was conclusory, I have no idea what the board was thinking. This decision goes directly against the MPEP’s many requirements that the claims must be “read as a whole.”
It is possible that the board was influenced by Markush claims. Markush claims are often used in chemistry when you want to claim a chemical formula with a list of alternate ingredients. If the examiner can show that one of the chemicals on the list was previously known to work for that formula, then the claim is obvious unless you remove the known chemical.
However, processor conditional logic is quite different, and again, ignoring the “then” branch does not read the claim as a whole. Moreover, this decision came down in 2016. Processors and conditional logic were well-known then. Possibly, the era matters. 2016 was soon after the Alice decision, and the USPTO was in an anti-software mood then. Whatever, the rule still stands.
How do we cope with this? By carefully using alternate language.
System and method claims have different strengths and weaknesses. So, it is too drastic to solve the problem by abandoning method claims. Instead, the trick is to disguise the “If-Then” contingent limitation with less direct language. As it turns out, this is what Schulhauser/Medtronic did. They removed the evil “if” statement and used paraphrased “in response to” language instead. This strategy worked, and the patent was subsequently issued.
An Alan Smithee production?
In Hollywood, “Alan Smittee” was occasionally put on the credits when a film’s director wanted to disown any participation in that movie. Interestingly, the prologue to the Schulhauser decision reads: “Chief Judge David Ruschke took no part in this decision or in the designation of this decision as precedential.”