The Patent Reexamination Paradox of 35 USC 112

It would be so nice if something made sense for a change - Alice (in Wonderland)

Earlier this week, the BPAI affirmed the rejection of certain means-plus-function claims of patent 5,283,862 in Ex Parte Lund (BPAI 2010-005851).  Claim 1 recites the following elements:

A portable computer unit comprising:
(a) a portable computer housing;
(b) computer means positioned. . .
(c) flat panel display means interfaced to . . .
(e) closure panel means having. . .
. . .said computer housing means and said closure panel means
incorporating electrical connecting means adapted to . . . (emphasis added)

Curiously, the Patent Owner took the position that ONLY the electrical connecting means invoked 35 U.S.C. § 112 6th paragraph (i.e., means-plus-function-element). In other words, even though most other claim elements used the same style of "means" language, these features were somehow different.1 Understandably, the examiner was perplexed as to the rationale for the distinction. As a result, it appeared that the Examiner instead applied a broadest reasonable interpretation to all of the elements that recited "means" language.

Although, in the end, the BPAI affirmed the examiner's rejection, the decision was based on a means-pus-function interpretation.  In the decision, the BPAI noted at page 3:

The examiner has a point that it is hard to discern any principled difference between the way "means" is used in the claim such that one skilled in the art would understand that only one such use invokes paragraph 6. The ordinary remedy for such confusion is to reject the claim under 35 U.S.C. 112(2) for indefiniteness. The Office does not reject original patent claims in reexamination under § 112, however.

Next, in affirming the Examiner's rejection of claim 1, the BPAI analyzed the claims under 35 USC § 112 anyway.As I pointed out in an earlier post on the problem of examining means-plus-function elements in patent reexamination, it is impossible to examine mpf claims without analyzing specification support for the claim elements under 112 paragraph six.

In this regard, MPEP 2258 (II) notes that:

Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . .  (emphasis added)

As can be appreciated, there is no distinction made between paragraph two or paragraph six in MPEP 2258, or any where else in the patent reexamination statutes or rules.

Of course, 35 U.S.C. § 112 6th provides:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (emphasis added)

So, the BPAI seems to be indicating that paragraph six issues will be considered in patent reexamination so that the interpretation of the reexamination statutes is not inconsistent with another statute (35 USC 112, 6th). Certainly, as further outlined by MPEP 2181-2183, it is impossible to examine a means-plus-function claim without considering the structure and acts described in the specification; otherwise there is no claimed structure by which to compare any structural equivalence of the prior art. See MPEP 2183 (C)

In other words, save paragraph six, the Office must ignore 112 issues or be forced to identify deficiencies deemed outside the scope of reexamination. Yet, once a paragraph six analysis is required, and the Office in fact analyzes specification support.  In such circumstances does it make any sense at all for the USPTO to ignore all other 112 issues?

[1] My guess is that the Patent Owner either did not want a narrow interpretation of other claim elements for litigation purposes, or was constrained by arguments to this effect made in an earlier litigation.

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