Appeal No. 2006-2485 Page 4
Application No. 10/925,646
“Unless the steps of a method actually recite an order, the steps are not
ordinarily construed to require one.” Interactive Gift Express Inc. v. Compuserve Inc.,
256 F.3d 1323, 1342, 59 USPQ2d 1401, 1416 (Fed. Cir. 2001). “Interactive Gift recites
a two-part test for determining if the steps of a method claim that do not otherwise recite
an order, must nonetheless be performed in the order in which they are written. First,
we look to the claim language to determine if, as a matter of logic or grammar, they
must be performed in the order written. . . . If not, we next look to the rest of the
specification to determine whether it ‘directly or implicitly requires such a narrow
construction.’ If not, the sequence in which such steps are written is not a requirement.”
Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70, 65 USPQ2d 1865, 1869 (Fed.
Cir. 2003) (internal citations omitted).
We find no language in claim 1 that requires the recited steps to be performed in
the order in which they are written. Appellants argue that the transition “comprising the
steps of” requires “sequenced steps.” Reply Brief, page 4. We do not agree. This
language merely requires that both of the recited steps be conducted. It does not
require that the steps be conducted in a particular order, or even sequentially.
We also conclude that the specification does not “directly or implicitly” require
that the steps of claim 1 be performed in the order in which they are written. Instead,
we conclude that claim 1 encompasses methods in which the recited steps are
performed simultaneously.
Appellants argue, however, that “in the application itself, it is clear at, for
example, paragraphs 16 and 18 that [steps (a) and (b)] are two separate steps.” Reply
Brief, page 4. At paragraph 16, the specification states that “[i]n the method of the
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