A Rose By Any Other Name Would Smell As Sweet…But Would It Satisfy 35 U.S.C. § 112?
Posted on May 13, 2010 in Articles
Shakespeare’s words are timeless: “A rose by any other name is just as sweet.” But, what is in a name? Does it really matter? The Board of Appeals for the Federal Circuit says, “yes it does.” A US Patent concludes with claims. But, what are the words in those claims? And, what do those words mean?
Even Shakespeare’s famous quotation is subject to interpretation. Certainly, most scholars will argue that Shakespeare was trying to say that what matters is what something is, not what it is called. Yet, there is speculation that an entirely different meaning was intended. A local rival to Shakespeare’s Globe Theater was the Rose Theater. Was Shakespeare mocking the Rose Theater? Once again, the meaning of the phrase can be debated.
While to Shakespeare, what something is called may not be important, the choice of words in a patent claim is an entirely different story. As patent claims define the invention for the purpose of applying the conditions of patentability and determining infringement, the choice of words used in the claims is critical to their meaning. Thus, there are language requirements for the specification and claims which are set forth in 35 U.S.C. § 112. Three paragraphs in particular are of importance to US patent prosecution:
- Paragraph 1: the specification shall contain a written description of the invention … in such full, clear, concise, and exact terms as to enable any person skilled in the art to … make and use the same …
- Paragraph 2: the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the Applicant regards as his invention.
- Paragraph 6: an element in a claim … may be expressed as a means … for performing a specified function without the recital of structure .. in support thereof, and such claims shall be construed to cover the corresponding structure … in the specification …
Recent decisions by the Board of Appeals of the Federal Circuit have been based on these three paragraphs. Several cases, in particular, have been issued as Precedential Opinions. The purpose of this paper is to review those decisions, to identify common themes in those decisions, and to understand what those decisions mean.
There are four Precedential Opinions from the Board of Patent Appeals and Interferences which are recent and significant. Those decisions are:
- Ex parte Miyazaki, 89 U.S.P.Q.2d 1207 (2008)
- Ex parte Catlin, 90 U.S.P.Q.2d 1603 (2009)
- Ex parte Gutta, Appeal No. 2008-4366(BPAI August 10, 2009) and
- Ex parte Rodriguez, Appeal No. 2008-000693 (BPAI October 1, 2009).
To some extent the decisions build on each other. The decisions are also based on opinions from the courts. These four decisions, themselves, can be separated into two groups. In one group, Miyazaki resides by itself because Miyazaki was not found to have 112(6) applicable to his claims. In the other group resides Catlin, Gutta, and Rodriguez, all decisions in which 112(6) was found to be applicable to the claims. These four decisions will be discussed in the order in which they were rendered.
A. Section 112(2)
In order to understand Miyazaki, it is helpful to look at the first independent claim:
A larger printer comprising: a paper feeding unit … being located at a height that enables a user, who is approximately 170cm tall, standing in front the printer to execute the paper feeding process …
This claim was rejected under 35 U.S.C. §112(2). The Board affirmed the rejection of this claim. After painstakingly describing and analyzing the claim, the Board concluded that the language of the claim was not clear. In particular, the Board stated:
In the present claims, because the relative position of the user and the printer are not well-defined in the claim, the claimed height of the paper feeding unit does not present a structural limitation on the height at all.
B. Threshold of Ambiguity
The Board acknowledged that the Federal Circuit is able to make decisions regarding the patentability of claims that are not always clear. The Federal Circuit has held in post-issuance patent infringement cases that the definiteness requirement “does not compel absolute clarity” and “only claims not amenable to construction or insolubly ambiguous are indefinite.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) When claims are amenable to more then one construction, they should when reasonably possible be interpreted to preserve their validity. Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1557 (Fed. Cir. 1996) This threshold of ambiguity, however, is different at the USPTO. In particular, unlike in post-issuance claim construction, the USPTO gives pending claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) This broader claim construction standard is justified because, during prosecution, the Applicant has the opportunity to amend the claims … an essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989)
The Board further stated:
As such, we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness then those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bonds of the claimed invention by holding the claim unpatentable.
This position of the Board, basically justifying the lower threshold that they may use compared with the Federal Circuit, is also supported by Halliburton Energy Servs. v. M-ILLC 514 F.3d 1244, 1255 (Fed. Cir. 2008):
We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that Applicants do so in appropriate circumstances . . .
The Board acknowledged that the Federal Circuit has never before set forth a different standard of review for indefiniteness under 35 U.S.C. §112, second paragraph. A different standard for indefiniteness, however, has been noted as being appropriate:
If this case were before an Examiner, the Examiner might well be justified in demanding that the Applicant more clearly define Ul, an there by remove any degree of ambiguity. However, we are faced with an issued patent that enjoys a presumption of validity. Citing Exxon Research and Engineering Co. v. U.S., 265 F.3d 1371, 1384 (Fed. Cir. 2001)
Thus, the Board took a firm position that they had adopted a lower threshold standard of ambiguity for indefiniteness than is taken by the Federal Circuit.
C. FACTUAL ANALYSIS
A two page factual analysis concluded that the phrase “sheet feeding area” is amenable to two possible definitions. The Board farther stated that “neither of these definitions make sense.” The Board thus concluded that the phrase is indefinite.
The Board also entered new rejections, including a rejection under 112(1). To make the rejection under 112(1), the Board first determined that 112(6) did not apply to certain claims. 112(6) permits the Board and the Federal Circuit to “import structure from the specification into the claim.” When a claim uses the term “means” to describe a limitation, a presumption inheres that the inventor use the term to invoke §112 paragraph 6. Altiris, Inc. v. Symantec Corp., 318 F.36 1363, 1375 (Fed. Cir. 2003) However, “a claim term that does not use “means” will trigger the rebuttable presumption that §112 paragraph 6 does not apply.”
Just to back up a little, 112(6) was enacted as a statutory response to Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946). In Halliburton, the Supreme Court held invalid an apparatus claim on the ground that it used a “means plus function” term. The Miyazaki Board cited Halliburton, and cited Greenburg as well:
Congress enacted paragraph 6 … to overrule that holding [that a means plus function claim was invalid]. In place of the Halliburton rule, Congress adopted a comprise solution … Congress permitted the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof. Greenberg v. Ethicon Endo- Surgerylnc., 91 F.3d 1580, 1582 (Fed. Cir. 1996)
The Board stated that any claim that includes purely functional claim language and which is not subject to the limited construction under 112, second paragraph, fails to meet the requirements of 112, first paragraph. Thus, the Board concluded as follows:
We conclude that in claim construction before the USPTO, the Supreme Courts Halliburton case remains viable for claims having purely functional claim language which is unlimited either by (1) the application of 35 U.S.C. §112, sixth paragraph, or (2) the additional recitation of structure.
The feature of “a sheet feeding area” violated the Halliburton rule because it did not contain any additional structure and it was not limited by the application of 35 U.S.C. §112(6). The claim was thus found to be unpatentable for lacking an enabling disclosure commensurate with the scope of the claim.
To summarize, the Board rejected claims under 112, first paragraph when there was deemed to be a purely functional recitation with no limitation of structure. Thus, the claims were unpatentable under §112, first paragraph, for lacking an enabling disclosure commensurate with the scope of the claims.
E. In re Steele
Finally, the Board reversed the prior art rejections:
…the prior art rejections must fall, pro forma, because they necessarily are based on speculative assumption as to the meaning of the claims.
See In re Steele, 305 F. 2d 859, 862-63 (CCPA 1962). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the rejections.
Before discussing Catlin, it is important to note how Catlin is different than Miyazaki. In Miyazaki, 112(6) was found to not apply. It was because 112(6) did not apply, that Miyazaki’s claims were rejected as being non-enabling under 112(1) (again “lacking an enabling disclosure commensurate with the scope of the claims.”) In Catlin, by contrast, 112(6) indeed did apply to the claims.
The Catlin panel acknowledged use of the term “means” in the claims:
When a claim uses the term “means” to describe a limitation, a presumption inheres that the inventor used the term to invoke §112(6).
…if there is no structure in the specification corresponding to the means- plus-function limitation in the claims, the claim will be found invalid as indefinite.” citing Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007)
The Catlin panel then referred to Aristocrat. In Aristocrat, the court stated that for a claim to a programmed computer, a particular algorithm may be the corresponding structure under 35 U.S.C. §112:
For a patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming.
Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claims to be “the corresponding structure, material, or acts” that perform the function, as required by §112(6). Aristocrat Techs. Austl. Pty Ltd. V Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) (Page 5)
In Aristocrat, the only portion of the specification that described the structure corresponding to the claimed functions was a statement that a worker in the art could “introduce the methodology on any standard microprocessor base gaming machine by means of appropriate programming.” The court held, however, that Aristocrat failed to disclose the algorithms that transform the general purpose microprocessor to a special purpose computer programmed to perform the disclosed algorithm. Thus, regarding Catlins’ claims, the Board took the following position:
- 112(6) applied because Appellants used the term means (claim 1: … providing … means for a consumer to participate in an earning activity …); and
- “the specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity.”
Thus, as the Appellant failed to disclose any algorithm, and thus failed to describe sufficient structure for performing the functions recited in the means elements the claims were found to be unpatentable under 112, second paragraph as being indefinite.
Gutta, like Catlin, included a 112(6) analysis and used that analysis to determine whether the requirements of 112(2) had been met. The decision was structured similarly to Catlin, with a few variations. Orthokinetics, in particular, is cited:
The test for defmiteness under 35 U.S.C. §112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.”
Thus, with a means plus function limitation, if the structure for performing the claim function can be identified, then the requirements of 112, second paragraph are satisfied.
Gutta’s claim 20 recited “means for computing a variance …” Thus, the Board stated that §112(6) had been invoked.
The Aristocrat analysis of the Catlin decision then followed. In particular:
…the corresponding structure of the means-plus-function limitation in a claim must be more then simply a general-purpose computer microprocessor to avoid pure functional claiming.
Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claims to ‘the corresponding structure, material, or acts’ that perform the function, as required by section 112 paragraph 6. Aristocrat, 521 F.3d at 1333
Finally, the Board concluded:
In this case and as discussed previously, the structure described in the specification that corresponds to the means-plus-function limitations in claim 20 is nothing more than a general-purpose computer that computes a variance and selects an item that minimizes the variance.
Thus, the claim was rejected under 112, second paragraph.
Rodriguez, like Catlin and Gutta found that 112(6) applied. The 112(6) analysis is then followed by a 112(2) rejection.
The starting point of the Rodriguez opinion was to support the importance of definiteness in claim language:
It has long been understood that a patent must describe the exact scope of an invention and its manufacture to ‘secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them.’McClain v. Ortmayer, 141 U.S. 419, 424 12 S. Ct. 76, 77, 35 L. Ed. 800 (1891)
The test for definiteness under 35 U.S.C. 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F. 2d 1565, 1576 (Fed. Cir. 1986)
In order to “get to” 112(2) the Board began with 112(6). To determine whether 112(6) applied, the Board refered to certain case law:
It is necessary to decide on an element by element basis whether 35 U.S.C. 112, sixth paragraph, applies. Not all terms in a mean-plus- function or step-plus-function clause are limited to what is disclosed in the written description and equivalents thereof, since 35 U.S. C. 112, sixth paragraph, applies only to the interpretation of the means or step that performs the recited function. See, e.g., IMS Technology Inc. v. Haas Automation Inc., 206 F. 3d 1422 (Fed. Cir. 2000)
An element of a claim described as a means for performing a function, if read literally, would encompass any means for performing the function. But section 112 (6) operates to cut back on the types of means which could literally satisfy the claim language. Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989)
A claim term that does not use ‘means’ will trigger the rebuttable presumption that 112 (6) does not apply. LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F. 3d 1364, 1372 (Fed. Cir. 2006)
This presumption that 112 (6) does not apply is overcome when there is “no structural context for determining the characteristics of the [claim element] other than to describe its function. Welker Bearing Co. v. PHD, Inc.,,550 F.3d 1090, 1096 (Fed. Cir. 2008)
The Board found that Appellants’ claim 10 did not recite any structure that would perform the claimed functions in their entirety. Thus, the presumption that section 112, sixth paragraph applied was not rebutted by the claim.
Having determined that 112 (6) applied, the Board next tried to find “structure, material, or acts” corresponding to the functions recited in the claims. Several cases were cited as relevant:
Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to “the corresponding structure, material, or acts” that perform the function, as required by §112(6). Aristrocrat, 521 F. 3d at 1333
That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in “means-plus- function” form must disclose the particular structure that is used to perform the recited function. Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009)
The Board looked at the specific portion of the specification identified by the Appellant. In addition, the Board “thoroughly reviewed” the specification:
In particular, the specification does not disclose any specific algorithm that could be implemented on a general purpose computer.
The Appellants have failed to disclose any algorithm, and thus have failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in claim 10 so as to render the claim definite. Accordingly, claim 10 is unpatentable under 35 U.S.C. 112, second paragraph, as indefinite.
The Board, however, did not stop there. They then turned to claims that do not include the word “means” as part of their language. The analysis continued:
Here, each of the claim elements begins with a term followed by functional language. We agree that the claim elements do not use the term “means” which would normally indicate that the claim element is intended to be a “means plus function” element. This absence of the term “means” triggers a rebuttable presumption that 112 (6) does not apply.
We must determine “whether the term is one that is understood to describe structure, as opposed to a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term “means for.”
To perform this analysis, the Board looked at dictionaries, the record before them, and the prior art:
Therefore, based upon our consultation of dictionaries, a review of the record before us, and a search of the prior art patents in this field, we conclude that none of these tree terms is an art-recognized structure to perform the claimed function, and claim 1 does not recite any other structure that would perform these claimed functions.
The Board also looked at the specification:
Nor does the specification provide a description sufficient to inform one of ordinary skill in the art the meaning of the term.
…we have no basis for concluding that these terms evoke for one of ordinary skill in the art either a particular structure or a variety of structures.
Therefore we conclude there is no structural context for determining the characteristics of these claim elements other than to describe the function of each element. We further conclude that these claim elements are verbal constructs that are not recognized as the name of a structure and are simply a substitute for he term “means for.”
Having determined that 112 (6) applied even though the word “means” has not been used, the Board took the following position:
The Appellants have failed to disclose any algorithm, and thus have failed to adequately describe sufficient structure. For performing the functions recited in the means elemtns contained in claim 1 so as to render the claim definite. Accordingly, claim 1 is unpatenable under 35 U.S.C. 112, second paragraph, as indefinite.
Finally, even if 112 (6) did not apply, the Board made a separate rejection based on enablement:
The scope of [patent] claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation…The specificaiton must teach those of skill in the art ‘how to make and how to use the invention as broadly as it is claimed’…The scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.
Also, the issue of undue experimentation was raised and In re Wands, 858 F.2d at 737 was cited. There are eight Wands factors:
- the quantity of experimentation necessary;
- the amount of direction or guidance presented;
- the presence or absence of working examples;
- the nature of the invention;
- the state of the prior art;
- the relative skill of those in the art;
- the predictability or unpredictability of the art; and
- the breadth of the claims.
The Board then commented on the permissible use of functional claim language:
Functional claim language is permissible only if the scope of the functional claim language is commensurate in scope with an enabling disclosure.
For claims having functional claim language, we conclude that we must determine whether the scope of the claim is enables as required under 35 U.S.C. 112, first paragraph. The breadth of the functional limitation must be commensurate with the scope of the supporting disclosure.
Thus, functional claim language is permissible only if the scope of the functional claim language is commensurate in scope with an enabling disclosure. The nexus between the two appears to be important. This was expressed another way:
“Functional” terminology may render a claim quite broad. By its own literal terms a claim employing such language covers any and all embodiments which perform the recited function. Legitimate concern often properly exists, therefore, as to whether the scope of protection defined thereby is warranted by the scope of enablement indicated and provided by the description contained in the specification.
The Federal Circuit has also recognized that the use of functional language may render a claim invalid for lack of enablement. The Court has explained that an element of a claim recited in functional terms “covers all embodiments performing the recited function.” Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003); see also In re Hauserman, 15 U.S.P.Q2d 1157, 1989 WL 144145 at *2 (Fed. Cir. 1989) (unpublished) (“‘[Functional language’ (not to be confused with “means plus function” language under 35 U.S.C. §112, 1(6) by itself covers any and all embodiments which perform the recited function.”) (emphasis in original). … As such, the specification may not enable the full scope of the functional language of the claim without undue experimentation.
To complete the analysis, the Board looked to the functional claim language and again recognized that:
…the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to provide automated random verification of complex and structurally variable systems.
Thus, the Board states that the claimed element is defined solely by the function being performed.
The Board finally looked at the Wand factors and concluded that:
Appellants’ Specification does not enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation.
Thus, the claims were found to be “unpatentable under 35 U.S.C. 112, first paragraph, for lack of an enabling disclosure commensurate with the scope of the claims.”
Finally, the prior art rejections were reversed:
A prior art rejection of a claim which is so indefinite that “considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims” is need, is likely imprudent. See In re Steele, 305 F.2d at 862…It should be understood, however, that our decision to reverse this rejection is based on the indefiniteness of the claimed subject matter and does not reflect on the merits of the underlying rejection.
There are several takeaways from these cases:
- The Board can find that 112(6) applies to the claims, and can then reject (or affirm a rejection) under 112(2) when there is insufficient disclosure to understand the “metes and bounds” of the claims.
- The Board can find that 112(6) does not apply to the claims, and can then reject under 112(2) when there is insufficient structure in the claims.
- The Board can argue that, even if 112(6) does not apply to the claims, a rejection can be made under 112(1) for the specification not being commensurate with the scope of the claims.
While a rose by any other name is just as sweet, perhaps one should not rely on Shakespeare as their philosophy of claim drafting. A specification commensurate with the scope of the claims? Functional claiming? Adequate disclosure? Perhaps in the world of patent claim drafting, a rose should be called nothing other than a rose. And, that rose should be described as completely as possible.
– By Lawrence Ashery