English
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:
Why not use a 37 CFR 1.105 information request to make the patent owner ID the spec support for the “means”? This Rule expressly applies to reexaminations and seems to apply even to Board members.
[The examiner cannot decide this fact issue without a patent owner response being allowed anyway.]
In this case the Patent Owner did provide the support, but just did it late (probably only realizing this when complying with the “claimed subject matter” requirement of an appeal brief). 105 requests were used by the Office here and there about 3-4 years back, but they seem to have fallen out of fashion since then.
In this case I am not sure that a 105 request would be appropriate as the Office must perform this analysis by statutue. In my opinion the easiest way to avoid this situation is to simply deny reexamination of any MPF claim that is not properly construed in the request. Rarely, if ever, do 3rd parties properly apply the art to MPF claims, the Office could save themselves a lot of time and effort by cracking down on this practice.
Thanks Scott, that’s an interesting suggestion for the PTO reexam team. But since typically, the reexamination request is by an adverse party, they are far more likely to want to resist admitting that there is ANY adequate spec support for the means function claims. Furthermore, as in In re Donaldson itself, limiting the “means” to a specific supporting spec item can cause the means-function claim to be read so narrowly as to avoid prior art and become patentable. But perhaps also not be infringed. So to get a fair reading of the means spec support it seems necessary for the examiner to do it, and let the parties argue if the disagree?
I agree, as many reexamination requests are spawned by concurrent litigation, admitting to support in writing is a concern in some cases. Of course, that is not the PTO’s problem.
As this case makes clear, it is quite impossible to examine a MPF claim without first identifying the supporting structure. Unless and until requester’s are willing to provide this information to the Office, there can be no SNQ.