English
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. Read the rest of this entry »
