The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential. In this decision the Board clarified how to interpret method and system claims that include conditional language. Importantly, this decision highlights that these two claim types are not necessarily interpreted the same way.
The Board indicated that if a condition precedent in a method claim is not met, the conditional steps recited in the claim are not required to be performed. As such, the broadest reasonable interpretation of such a method claim does not include the conditional steps. Therefore, the conditional steps in a method need not be found in the prior art in order to deny patentability of a method claim. In contrast, if the same steps are part of a system claim having a programmed processor performing the steps, the system claim is interpreted more narrowly to include all of the steps. The Board reasoned that since there is a structure (i.e., a processor) tied to the steps in a system claim, the structure is present in the system regardless of whether the condition is met and the conditional function is actually performed.