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Board Improperly Relied on Functional Description of, Not Structure Corresponding to, Means-Plus-Function Limitation

April 03, 2001
Yoshida, Naoki

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Last Month at the Federal Circuit - May 2001

Judges: Judges: Clevenger (author), Plager, and Gajarsa

In In re Beigel, No. 00-1442 (Fed. Cir. Apr. 3, 2001) (nonprecedential decision), the Federal Circuit vacated the rejections of certain claims as being obvious under 35 U.S.C. § 103, but affirmed the rejections of other claims under §§ 103 and 112, ¶ 2.

Michael Beigel and others had filed a patent application related to an electronic identification system with improved sensitivity. In particular, the claimed invention was directed to an electricalobject identification system consisting of an interrogator (“reader”) and a transponder (“tag”).

During prosecution, certain claims of the application were rejected as being obvious over certain prior art references including U.S. Patent No. 4,864,633 to Chatelot (“Chatelot”) and one claim was rejected under 35 U.S.C. § 112, ¶ 2, as failing to particularly point out and distinctly claim the subject matter. The Board sustained these rejections.

On appeal, Appellants contested that Chatelot did not disclose “resonating means” as required by certain claims, because Chatelot did not maintain a tuned condition in a range of predetermined values. It was undisputed that Chatelot disclosed a predetermined value of zero, which fell within the range of the claimed values. Appellants, however, argued that “resonating means” should be interpreted as maintaining the resonating circuit in more than one tuned condition and, therefore, Chatelot did not disclose identical or equivalent structure for carrying out the claimed function.

A proper means-plus-function analysis, according to the Court, would compare the structure shown in certain detailed drawings, not a functional block of the basic figure. Having found that the Board had not done so, the Federal Circuit concluded that the means-plus-function analysis on certain claims was improper and vacated the rejection of those claims under 35 U.S.C. § 103.

With respect to another claim, the Federal Circuit concluded that the phrase “near resonance” encompasses “at resonance” based on the plain meaning of the term ”near,” and affirmed the rejection of that claim under 35 U.S.C. § 103.

Furthermore, the Federal Circuit agreed that a claim reciting “[a]n apparatus of practicing the method claim 98” failed to meet the statutory requirements of 35 U.S.C. § 112, ¶ 2.