Common USPTO Debate Clarified by New Precedential Decision Ex parte Schulhauser

A common debate at the PTO in recent years at both the examination and Board level has been the appropriate treatment of a claimed condition precedent.  That is, if a claim recites that certain functionality only occurs on certain conditions, does that alternate functionality constrain the broadest reasonable scope of the claim?  

In Ex parte Schulhauser (here) the Board makes clear that the answer to this question may depend on whether or not the claim is presented in a method or apparatus claim format.

In the case of a method claim, the failure to meet a condition precedent means that corresponding conditional steps recited in the claim need not be performed.  So, the broadest reasonable interpretation of such a claim cannot include steps that are not required in all scenarios.  On the other hand, where the same claimed functionality is recited as part of a computer implemented apparatus claim, the Board explains:

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 interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed.

While the computer implemented apparatus in this instance was presented as a means-plus-function feature (necessarily requiring an algorithm for structural support) structure presented as “configured to” or “programmed to” implement such conditional functionality would presumably enjoy the same analysis.  

This decision may prove especially helpful to patent prosecutors as it is not uncommon for examiners to confuse the above method/apparatus distinctions.