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
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
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
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. . .
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
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?
 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.
View more information at Patents Post-Grant