In the world of patent prosecution, the landscape is ever-evolving, shaped by a continuous interplay between legal precedent and the dynamic intricacies of innovation. One such precedent, the Schulhauser case, has generated substantial discourse within the patent prosecution community. In re Schulhauser is a precedential opinion by the PTAB from 2016. See previous posts here. This post delves into the multifaceted implications of the Schulhauser doctrine, highlighting how it can both simplify examiner rejections and bolster applicant challenges. By examining recent developments, including a case involving an inventive dishwasher, this post provides patent professionals with some insights into leveraging the Schulhauser case effectively in their practice.
Schulhauser emanates from the United States Patent and Trademark Office's Patent Trial and Appeal Board (PTAB). The central doctrine pertains to conditional claim limitations in method claims and their susceptibility to rejections, and more particularly how examiners can ignore them in certain situations. While some recent blog posts have critiqued the reasoning behind Schulhauser , specifically related to its purported disregard for claim limitations under a dubious legal theory unsupported by Federal Circuit case law, it remains a forceful attack point used by examiners and the PTAB alike.
Case in Point: A dishwasher system claim featuring an evaluating unit "configured To determine" certain aspects. Claim 11 on appeal is reproduced below (Appeal 2022-003297, Application 16/617,535):
11. A household dishwasher, comprising:
a washing chamber;
a controller apparatus configured to perform a wash program from a plurality of wash programs for washing items to be washed arranged in the washing chamber;
an optical sensor configured to capture an optical sensor signal of the washing chamber during performance of the wash program; and
an evaluating unit configured to ascertain a subsequent loading of items to be washed by a user during performance of the wash program such that the wash program is interrupted as a function of the captured optical sensor signal of the washing chamber, configured to determine a point in time of the subsequent loading of items to be washed by the user during performance of the wash program but before an entire wash program has finished and stopped, such that the evaluating unit is configured to determine, in relation to the performed wash program, whether an addition of a cleaning agent has already taken place, whether a pre-rinsing has already been finished, whether a cleaning has already been finished, and whether a rinsing has already been started, and configured to perform a predetermined action as a function of the ascertained subsequent loading and the determined point in time, wherein the subsequent loading of items to be washed by the user during performance of the wash program comprises the user subsequently loading at least one soiled item to be washed into the washing chamber after the wash program has already been started.
As illustrated above, the claim in question was directed at a system with an "evaluating unit configured to determine" specific conditions. The detailed phrasing of this claim echoes the conditional nature of claim limitations discussed in Schulhauser. Notably, the PTAB here cited the Schulhauser case as grounds for overturning a rejection in this instance. From the PTAB’s decision:
As a result of these express recitations in claim 11, the evaluating unit must include the requisite hardware/software that is programmed to perform the functions of identifying the point in time and stage of the washing program interrupted and performing a predetermined action as a result. See Typhoon Touch Techs, Inc. v. Dell, Inc., 659 F.3d 1376, 1380–1381 (Fed. Cir. 2011) (upholding the district court’s holding that a claim reciting “a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen” required the memory to perform the recited function, rather than simply having a capability of carrying out such function should further modification or programming be made); see also In re Noll, 545 F.2d 141, 148 (CCPA 1976) (holding that a “programmed machine is structurally different from a machine without that program”); see also In re Bernhart, 417 F.2d 1395, 1399–1400 (CCPA 1969) (“[I]f a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.”); see also Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *7 (PTAB Apr. 28, 2016) (precedential) (“The 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.”)
This scenario highlights the dual nature of the Schulhauser doctrine. Without expressly addressing the distinction between systems and methods generically, at least this PTAB decision lends support to the idea that conditional limitations that require hardware/software distinguish the facts of the Schulhauser case.
The Schulhauser precedent exemplifies the intricate nature of patent law and its interplay with innovation. While it may be the subject of criticism, its impact cannot be dismissed. By understanding the nuanced application of the Schulhauser doctrine, patent professionals can navigate the complexities of examiner rejections with heightened precision.