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USPTO Reexamination of Means Plus Function Claims
–A Tale of Two Statutes –
When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas. In the movie, Joe Pesci explains a painting (right) on his mother’s dining room wall to his friends, he describes the painting as follows: Oh, I like this one…One dog goes one way, the other dog goes the other way, and this guy’s in the middle is sayin’, “Whadda ya want from me? ”
When it comes to reexamination of means-plus-function claims, the USPTO is clearly in the middle, situated between conflicting statutory perspectives.
It is well established that patent reexamination is granted only for substantial new questions of patentability based on patents and printed publications. Outside of limited circumstances relating to intervening art, 35 USC § 112 is not considered in relation to original patent claims of an issued patent in reexamination.[1]
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)
The above noted prohibition against analyzing original patent claims for 112 compliance in reexamination is wholly inconsistent with Read the rest of this entry »
