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Intellectual Property

Failure to Identify Specification Structure a Non-Starter for BPAI

Rejection in Ex Parte Patent Reexamination Flawed as to Means-Plus-Function Claim Analysis

On May 26, 2010 the BPAI affirmed-in-part the final rejection of certain claims in the ex parte reexamination of U.S. Patent 6,102,802 owned by Anascape LTD. The '802 Patent relates to gaming controllers, and was previously asserted in the E.D. of Texas against Microsoft and Nintendo. Since the commencement of the litigation, both defendants appear to have settled.

The BPAI affirmed the rejection of method claims 12-15 of the '802 Patent based on an obviousness rejection. More interestingly the rejection of means-plus-function claims (MPF) 3-11 and 16-19 was reversed...kinda

During prosecution of the reexamination, it seems the Patent Holder failed to point out that the broadest reasonable interpretation applied to MPF claims is constrained by 35 U.S.C. 112, 6th paragraph. Instead, this argument was first presented in the appeal brief.

The Examiner's Answer pointed out that although structure of the specification of the '802 Patent was not analyzed, prior art structures were in fact identified in the cited art in support of the rejections of record.

Yet, the term equivalent structure in a MPF sense has a very specific meaning. In order to identify an equivalent structure in the art relative to a means-plus-function element, the Office must first determine a reference structure of the specification by which to gauge equivalence. In other words, the proper examination of a MPF claim feature requires first, identification of the claimed function of an MPF element and, second, identification of structure described in the patent specification that performs the function. Once this threshold determination is complete ONLY THEN can an equivalent structure be identified in the art relative to that of the patent specification. MPEP 2183 outlines the required analysis for determining equivalence.

As the examiner had not performed this threshold specification analysis (perhaps due to the belated presentation of the issue on appeal), the BPAI explained:

While we understand the Examiner's objection to the timing at which the claim construction issue was first raised by the Appellant, we reverse the Examiner's rejection because the means-plus-function limitations must first be construed prior to application of the prior art to the claims. In reversing the rejections, we take into consideration the Appellant's contention that the combination of [art] fails to describe the recited "means for outputting" and "means for creating" (Reply Br. 3-6), evaluation of which cannot occur without prior construction of these limitations. Why the structures identified by the Examiner in the prior art references would meet the claimed means-plus-function limitations has not been explained.

Therefore, we reverse the Examiner's rejections of [the claims]. However, this reversal of the Examiner's rejections of these claims is based solely on the lack of claim construction. We do not opine as to the correctness of the Appellant's claim construction of the means-plus function limitations, nor do we base this reversal on any aspect of the substantive analysis set forth in the Examiner's rejections. (emphasis added)

Although the BPAI did not use the word "remand," prosecution is certain to be reopened to allow the examiner an opportunity to explore these issues. 

For more of our discussions on the treatment of MPF claims in patent reexamination, see:

Treatment of MPF Claims in Patent Reexamination

The Patent Reexamination Paradox

View more information at Patents Post-Grant