Method claim steps in a patent application are presumed not to require a specific order

An inventive method may have more than one step as part of the process. When a patent applicant claims an inventive method including multiple steps, the order listed is not a limitation of the claim, unless the explicitly or implicitly stated in the specification or claim itself. This is a well-settled principle, but one that becomes complicated in practice.

In in recent PTAB appeal decision in a Microsoft application (13/076,460), the issue was fundamental to the appeal. The application related to a method for revoking licenses to software. Microsoft's relatively short brief implicitly relied on a relationship between steps of the method in attacking the Examiner's rejection. Specifically, the PTAB addressed the issue directly in the decision affirming the Examiner's  rejection noting that antecedent basis itself cannot overcome the presumption that method steps are not limited to the order in which they are recited.  

Claim 1 of the application is listed below, and requires two sending steps (the last two steps in claim 1):

Microsoft implicitly relied on an argument that the sending of the replacement license credentials must be after the sending of the indication that the license credentials are revoked. Specifically, Microsoft argued that in the cited art, the activation (or re-activation) does not send license because it is performed during a purchase occurring before the activation. The PTAB found this unpersuasive as not commensurate with the scope of the claims. Namely, the PTAB found that reliance on antecedent basis was improper, and that the claim did not require a specific order. The mere fact that the second "sending" element referred to "replacement" was insufficient because the dictionary definition of replace (to take the place of) had no temporal aspect. From the PTAB's opinion:


So, when appealing to the PTAB, be careful that the arguments against the rejection do not rely (explicitly or implicitly) on an order between the steps that is not actually claimed.