By Scott A. McKeown
| February 5, 2010
g class="size-medium wp-image-1043 alignleft" title="goodfellas_painting-small" src="http://www.patentspostgrant.com/wp-content/uploads/2010/02/goodfellas_painting-small-241x300.jpg" alt="goodfellas_painting-small" width="241" height="300" />--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.
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 35 U.S.C. § 112 6th paragraph that mandates interpretation of means-plus-function claims.
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)
Accordingly, unlike most claims in patent reexamination, means-plus-function claims may not be properly accorded a broadest reasonable interpretation. Clearly, and 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) Yet, in the case of deficient specification support for such claims, a rejection pursuant to 35 U.S.C. § 112 2nd paragraph is not available in reexamination for original patent claims.
As can be appreciated, in such a situation, the Office must choose between statutes. In other words, the Office must decide to ignore clear 112 deficiencies, or be forced to consider issues deemed outside of the scope of reexamination. Even assuming the 112 issues are ignored, how then are the original patent claims invoking 35 U.S.C. § 112 6th paragraph examined or judged in relation to the prior art? Are such claims given a broadest reasonable interpretation despite their statutorily mandated scope?
This dilemma is especially problematic for computer implemented means-plus-function claim features as such are increasingly found indefinite as of late. As evident by the Office memo of 2008 from John Love, algorithmic structure must be provided in relation to computer implemented inventions relying on a general computing platform. Such deficiencies have played out repeatedly in recent Federal Circuit decisions on the issue. Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed.Cir. 2008) See also Blackboard, Inc. v. Desire2Learn Inc., No. 2008-1368, slip op. at 21 (Fed. Cir. July 27, 2009), Likewise, the BPAI has also reviewed computer implemented means-plus-function support.
Assuming that the original patent claims of the Aristocrat case had first passed through reexamination without comment as to their deficient 112 issues, would these claims have been accorded a heightened presumption of validity with respect to such 112 issues at trial? Alternatively, would the procedural nuances of patent reexamination have been appreciated with respect to 112 issues of the original patent claims?
Certainly, the intent of the Congress in drafting the ex parte and inter partes reexamination statutes was not to void or undermine any portion of 35 U.S.C. § 112 6th paragraph. Likewise, a long held principle of statutory interpretation is that a statute shall not be interpreted so as to be inconsistent with other statutes. In such cases of inconsistency, the judiciary will attempt to provide a harmonious interpretation.
In view of the clear conflict between statutory guidance, the Office is stuck in the middle. With their hands seemingly tied on this issue, one is left to wonder whether the Office should seek self help and attempt to provide a harmonious interpretation on their own via revision of the MPEP in this regard, or seek clarification via the new reform legislation. To this end, perhaps a reasoned solution is to examine 112 issues in relation to original means-plus-function patent claims once reexamination is granted on another, art related SNQ.
 Analysis of statutory subject matter under 35 U.S.C § 101 is likewise precluded in reexamination. (save for double patenting)