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Means-Plus-Function Claim Lacking Corresponding Structure Rejected as Indefinite

August 29, 2011

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Last Month at the Federal Circuit - September 2011

Judges: Newman (dissenting), Gajarsa, Linn (author)

[Appealed from: Board]

In In re Aoyama, No. 10-1552 (Fed. Cir. Aug. 29, 2011), the Federal Circuit affirmed the Board’s rejection of claims 11 and 21 in U.S. Patent Application No. 10/798,505 assigned to Mitsui Bussan Logistics, Inc. (“Mitsui”). Because the Board erred in construing a means-plus-function limitation of claims 11 and 21, the Court affirmed the rejection of claims 11 and 21 for failure to satisfy the definiteness requirement of 35 U.S.C. § 112, ¶ 2.

Independent claims 11 and 21 recited a “reverse logistics means for . . . generating transfer data.” The examiner construed the limitation as a means-plus-function limitation and concluded that the structure corresponding to the “reverse logistics means” for transferring was a computer implemented with software. Under this construction, the examiner rejected the claims on the ground of anticipation. Mitsui appealed, contending that Figure 8 and its accompanying description disclosed the corresponding structure for the means-plus-function limitation.

The Board disagreed that Figure 8 and its accompanying description provided a structure or algorithm for generating transfer data. The Board then “scoured the specification for any implied structure that could even arguably generate transfer data.” Slip op. at 4. The Board, in giving “generating transfer data” a broad construction, focused on the application’s disclosure of generating shipping data. The Board concluded that the structure for generating transfer data was “open ended.” Under this construction, the Board affirmed the examiner’s anticipation rejection.

On appeal, the Court agreed with Mitsui and the Board that the specification and prosecution history link the claimed “means for generating transfer data” with the flowchart of Figure 8. However, after finding that Figure 8 did not disclose sufficient structure for the claim limitations, the Court rejected the Board’s construction of “transfer data” to include “shipping data.” The Board erred by identifying structure that was not clearly linked or associated by the specification or prosecution history with the function actually recited in the claim, i.e., “generating transfer data.” The only portion of the specification the Court found where Mitsui described the corresponding structure was the flowchart of Figure 8.

Mitsui argued that the Board’s determination that Figure 8 does not contain sufficient structure to support the limitation was equivalent to official notice that a flowchart algorithm can never provide the algorithmic structure for a means-plus-function element. The Court rejected this argument, stating that the Board simply concluded that this particular flowchart and its accompanying description failed to provide any structure or algorithm whatsoever. The Court further agreed with the Board that, while Figure 8 provided a high-level process flow, it did not describe any structure and “fail[ed] to describe, even at a high-level, how a computer could be programmed to produce the structure that provides the results described in the boxes.” Id. at 9 (citation omitted).

Because the means-plus-function limitation of claims 11 and 21 lacked sufficient disclosure of structure, the Court deemed the claims unpatentable as indefinite under 35 U.S.C. 112, ¶ 2. Further, because a claim cannot be both indefinite and anticipated, the Court never reached the ground of rejection relied upon by the Board.

Mitsui contended that the Court may only review the grounds upon which the Board based its determination, citing Securities & Exchange Commission v. Chenery Corp., 318 U.S. 80 (1943). However, the Court noted that Chenery itself made clear a decision should be affirmed, even on alternative grounds, so that it is within the power of the appellate court to formulate. The Court emphasized that, as a legal question, failure to satisfy the definiteness requirement is a ground of rejection within the power of the appellate court to formulate.

Moreover, the Court distinguished In re Fleissner, 264 F.2d 897 (CCPA 1959), which reached an opposite conclusion in a slightly different factual context. The Board in Fleissner rejected applicant’s claims containing a means-plus-function limitation as anticipated in view of a prior art reference. On appeal, the PTO sought to affirm the rejection on the basis that the limitation lacked a corresponding structure in the specification. The predecessor court refused to make the indefiniteness rejection, stating that it was a beyond their statutory authority to institute a ground of rejection not of record. The Federal Circuit distinguished Fleissner by stating that while claim construction and indefiniteness are now recognized as legal questions, at the time of Fleissner, these were not seen as legal in nature.

Finally, the Court recognized that if they were simply to affirm the Board’s rejections, Mitsui would not be permitted to amend its claims. But, if the Board had correctly issued a section 112, ¶ 2 rejection, Mitsui would have had the opportunity to amend its claims or to submit new evidence rebutting the ground of rejection. To remedy this discrepancy, the Court afforded Mitsui the same protections as it would have had before the Board with respect to the rejected claims by remanding the case to the Board.

Judge Newman dissented with the majority because, while Mitsui was given the opportunity to amend the claims or submit new evidence in light of the rejection, Mitsui did not have the opportunity to argue the merits of the definiteness rejection. In Judge Newman’s opinion, Figure 8 and its corresponding description supported the definiteness requirement for claims 11 and 21. Judge Newman would have also addressed whether one of ordinary skill in computer programming would understand Figure 8 and its descriptive text as a structural algorithm that could be routinely programmed to perform the function of generating transfer data.

Summary authored by Jameson Q. Ma, student associate at Finnegan.