Deficient Means-Plus-Function Claims Broadened in Patent Reexamination

By Scott McKeown on March 28, 2011

USPTO Forced to Turn a Blind Eye to Support Issues in Patent ReexaminationLast year I explained that the patent reexamination statutes preclude proper review of originally issued means-plus-function claims (i.e., claims drafted to invoke 35 U.S.C. § 112 6th paragraph). This is because a proper examination of a means-plus-function claim requires consideration of the structure and acts described in the specification. Once such acts/structure are identified, then a determination is made as to the equivalence of the acts/structure of the cited prior art. Yet, where support is deficient for MPF claims, a rejection pursuant to 35 U.S.C. § 112 2nd is not possible. As a reminder, 35 U.S.C. § 112 cannot be used to reject original claims in patent reexamination. Such a rejection is inappropriate as it would not be based on a “patent or printed publication as required by 35 U.S.C. § 301. See MPEP 2258 (II). Thus, in cases where the specification support is deficient, the USPTO must ignore this deficiency during patent reexamination. Instead, the claims are examined by turning a blind eye to the indefiniteness issue and applying the familiar broadest reasonable interpretation standard. In applying the BRI standard, the scope of MPF claims are broadened beyond their relatively narrower, statutorily defined scope–which is limited to the specific act/structures of the specification and equivalents. Confusingly, enlarging the scope of a claim in patent reexamination is also in direct conflict with a patent reexamination statute, 35 U.S.C. § 305. This patent reexamination paradox was most recently demonstrated in Ex Parte Avid Identifications Systems Inc. (U.S. Patent 5,499,017)Although the Patentee in Avid appeared to identify structure in their brief, the Board indicated that the cited structure did not clearly correspond to the claim language, explaining:In the absence of any specific structure in the Specification corresponding to the claimed “means for extracting data,” we construe the “means” as including any structure that can be represented by a box that performs the recited function or equivalents thereof. (emphasis added).If this had been an appeal of a patent application, a 112 2nd paragraph rejection would have certainly been issued, not so for patent reexamination.Ultimately, the Avid appeal affirmed art rejections of the MPF claims. As such, this claim interpretation conundrum may seem harmless. Still, in appeals where the art rejections of MPF claims are reversed, application of the BRI standard effectively broadens the scope of the reexamined claims– in violation of the statute. Perhaps more significantly, the creation of such a record is unnecessarily misleading the public as to the proper scope of such claims.MPF support issues are increasingly case dispositive in patent litigation. 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).Interestingly, in a different patent reexamination context, a challenge to 112 written description is permitted. For example, if the patent subject to the reexamination request claims priority to a parent case, intervening prior art may be presented together with an argument that the priority claim is ineffective as to written description. Presumably, the 112 analysis is permitted in this context as the request is not attacking 112 support of the reexamined patent, but instead, corresponding disclosure of a parent. Therefore, the SNQs presented are still based on patents and printed publications as they do not explore 112 issues of the underlying specification.It seems that MPF claims cannot be properly reexamined at the USPTO until the conflict between the above noted patent reexamination statutes is remedied. Although the current patent reform legislation before Congress addresses many aspects of post grant practice, this issue remains outstandi

Last year I explained that the patent reexamination statutes preclude proper review of originally issued means-plus-function claims (i.e., claims drafted to invoke 35 U.S.C. § 112 6th paragraph). This is because a proper examination of a means-plus-function claim requires consideration of the structure and acts described in the specification. Once such acts/structure are identified, then a determination is made as to the equivalence of the acts/structure of the cited prior art. Yet, where support is deficient for MPF claims, a rejection pursuant to 35 U.S.C. § 112 2^nd is not possible.

As a reminder, 35 U.S.C. § 112 cannot be used to reject original claims in patent reexamination. Such a rejection is inappropriate as it would not be based on a “patent or printed publication as required by 35 U.S.C. § 301. See MPEP 2258 (II). Thus, in cases where the specification support is deficient, the USPTO must ignore this deficiency during patent reexamination. Instead, the claims are examined by turning a blind eye to the indefiniteness issue and applying the familiar broadest reasonable interpretation standard.

In applying the BRI standard, the scope of MPF claims are broadened beyond their relatively narrower, statutorily defined scope–which is limited to the specific act/structures of the specification and equivalents. Confusingly, enlarging the scope of a claim in patent reexamination is also in direct conflict with a patent reexamination statute, 35 U.S.C. § 305. This patent reexamination paradox was most recently demonstrated in Ex Parte Avid Identifications Systems Inc. (U.S. Patent 5,499,017)

Although the Patentee in Avid appeared to identify structure in their brief, the Board indicated that the cited structure did not clearly correspond to the claim language, explaining:

In the absence of any specific structure in the Specification corresponding to the claimed “means for extracting data,” we construe the “means” as including any structure that can be represented by a box that performs the recited function or equivalents thereof. (emphasis added).

If this had been an appeal of a patent application, a 112 2nd paragraph rejection would have certainly been issued, not so for patent reexamination.

Ultimately, the Avid appeal affirmed art rejections of the MPF claims. As such, this claim interpretation conundrum may seem harmless. Still, in appeals where the art rejections of MPF claims are reversed, application of the BRI standard effectively broadens the scope of the reexamined claims– in violation of the statute. Perhaps more significantly, the creation of such a record is unnecessarily misleading the public as to the proper scope of such claims.

MPF support issues are increasingly case dispositive in patent litigation. 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).

Interestingly, in a different patent reexamination context, a challenge to 112 written description is permitted.

For example, if the patent subject to the reexamination request claims priority to a parent case, intervening prior art may be presented together with an argument that the priority claim is ineffective as to written description. Presumably, the 112 analysis is permitted in this context as the request is not attacking 112 support of the reexamined patent, but instead, corresponding disclosure of a parent. Therefore, the SNQs presented are still based on patents and printed publications as they do not explore 112 issues of the underlying specification.

It seems that MPF claims cannot be properly reexamined at the USPTO until the conflict between the above noted patent reexamination statutes is remedied. Although the current patent reform legislation before Congress addresses many aspects of post grant practice, this issue remains outstanding.