BPAI Creates New Test for 35 U.S.C. §112

Board Finds Indefiniteness exists where Claims are Subject to Multiple Interpretations and Claims Reciting Purely Functional Relationships are Invalid for a Lack of Enablement

In Ex parte Kenichi Miyazaki, 89 USPQ2d 1207 (BPAI 2008), the appellant, Kenichi Miyazaki (Miyazaki), sought the Board’s review under 35 U.S.C. §134 of the rejection of pending claims 1-6, 13, 15-18, 26 and 31 for the Application No. 09/386,000.  The claimed invention is directed to a large printer using a paper roll.  The Examiner rejected the claims 1-6, 13 and 16-18 under 35 U.S.C. §112, second paragraph, as being indefinite with regard to the recited features of a height of the paper feeding unit and a sheet feeding area with reference to a user’s height.   

On appeal, the first issue related to whether the Appellant has shown that the Examiner erred in determining that claims 1-6, 13 and 16-18 are indefinite under 35 U.S.C. § 112, second paragraph, when reciting the height features when read in view of the specification.  The second issue related to the recitation of “sheet feeding area” and “sheet feeding area operable to feed…”  With respect to claims 13, 15, 16, 18 and 26, the issue before the Board was whether the recitation of “sheet feeding area” is too indefinite for those skilled in the art to understand what is being claimed in light of the specification.  With respect to claims 15 and 26, the issue before the Board was whether the recitation of “sheet feeding area operable to feed…” has no structural limitation and is a purely functional recitation, and thus is indefinite under 35 U.S.C. §112, first paragraph. 

BPAI Develops New Rule for Indefiniteness

The Board, in addressing the rejection of claims 1-6, 13, and 16-18, under 35 U.S.C. §112, second paragraph, held that the Federal Circuit’s rule on the definiteness requirement, with respect to post-issuance patent infringement cases, is that “[o]nly claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite”  Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).  The Board explained that the Federal Circuit states that such a high standard for finding ambiguity results from the statutory presumption of patent validity.  Exxon Research & Eng’g Co. V. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). 

However, the Board held that such a rule leads to a narrow interpretation of claims that is counter to the United States Patent and Trademark Office’s standard for a broad reading for claim construction during prosecution.  The Board stated that the broader claim construction standard used during prosecution is justified because an applicant may amend claims to more precisely define the invention during the prosecution. In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).  As such, the Board applied a new, lower standard for finding ambiguity.  Rather than “requiring that the claims are insolubly ambiguous,” the Board held 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 bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second paragraph, as indefinite.”  Additionally, the Board noted that while their reviewing court has not previously set forth a different standard of review for indefiniteness, with respect to pre-issuance claims versus post issuance claims, the Federal Circuit has stated that such difference may be necessary during prosecution of a patent.  Exxon Research & Eng’g Co. V. United States, 265 F.3d 1371, 1384 (Fed. Cir. 2001).  As such, the Board held that a new, lower standard was appropriate for purposes of 34 U.S.C. §112, second paragraph during prosecution. 

In applying this standard, the Board noted that claim 1 doesn’t state a positional relationship between the user and the printer.  Specifically, it is not clear if the printer is on the ground or on a stand or if the user is standing on the ground or sitting in a chair.  The Board further stated that with the many possible combinations of the relative positions between user and the printer in claim 1 “does not, in fact, impose a structural limitation on the height of the paper feeding unit of the claimed printer.”  Moreover, the Board found that the Applicant’s specification does not impose a clear relational position upon the language of claim 1.  As such, the Board declined “to read the preferred embodiment depicted in Figure 1 into the claim, because the language is broader than the embodiment, and the preferred embodiment implies that other embodiments may satisfy the claim.”  With the language of independent claims 3 and 4 being broader than claim 1, the Board stated that such claims do not impose a limitation as to the structure and positional relationship and are indefinite as well. 

With respect to claims 16 and 18, though such claims include language that the printer is “substantially at ground level,” there is no clarity as to where the user is standing or positioned, and as such, are indefinite. 

While claim 13 recited that both the user and the printer are “substantially at ground level,” the Board found that it is unclear what “sheet feeding area” means in the claim and consequently agreed with the Examiner’s rejection on new grounds set forth in the appeal decision.  Under the new grounds for rejection, the Board found that claims 13, 15-18, 26 and 31 are rejected for being indefinite.  Because there are two possible meanings for “sheet feeding area,” the first being the space where the paper roll is loaded and a cover member above the space, with the cover member having a space where paper can be placed to be fed into the printer.  The second ordinary meaning of “sheet feeding area” is the area of the printer that feeds paper into the printer, which the Board states to be the cover member in the present application.  The Board stated that “neither the Specification, nor the claims, nor the ordinary meanings of the words provides any guidance as to what the Appellant intends to cover with this claim language,” and consequently finds “sheet feeding area” to be ambiguous. 

BPAI Applies Halliburton to Functional Claim Limitation

With respect to claims 15, 26 and 31, the Board entered as a new ground for rejection that the recitation of “sheet feeding area operable to feed…” is a functional recitation and doesn’t impose a limitation on structure.  Under this new ground, the claims were invalid under 35 U.S.C. §112, first paragraph for violating the Halliburton rule, named after Halliburton Oil Well Cementing Co. v. Walker, 329U.S. 1, 71 USPQ 175 (1946). 

Specifically, the Board first found that, since the word “means” does not appear in the claim, the Board assumed that the Appellant did not intend to invoke 35 U.S.C. §112, sixth paragraph.  Further, because the Appellant still has the opportunity to amend the claims to invoke 35 U.S.C. §112, sixth paragraph, the lack of structure in the claims does not rebut the presumption that 35 U.S.C. §112, sixth paragraph, does not apply, and therefore, the Board held that claims 15 and 26 do not require claim interpretation under 35 U.S.C. §112, sixth paragraph.  As a result, the Board held that the claim element “sheet feeding area operable to feed…” is purely functional.

The Board voiced two USPTO concerns regarding purely functional claim elements that the Applicant does not limit via 35 U.S.C. §112, sixth paragraph.  First, the Board stated that the USPTO is concerned that such claims are indefinite under 35 U.S.C. §112, first paragraph.  Second, the Board stated that the USPTO is concerned that such “unlimited purely functional claiming may reasonably be construed to encompass any and all structures for performing the recited function, including those which are not what the applicant invented.”  For these reasons, the Board held that the Supreme Court’s Halliburton decision is applicable to claims reciting purely functional claim language when the claims are unlimited by either (1) the application of 35 U.S.C. §112, sixth paragraph, or (2) the additional recitation of a structure. 

Moreover, as the claims are not means plus function claims and otherwise lacked structure, the Board found them invalid under 35 U.S.C. §112, first paragraph, by finding that there is a prohibition on “purely functional” claim language having no structure limitation.  The Board held that the Supreme Court had previously found purely functional limitations to be invalid under 35 U.S.C. §112, first paragraph.  Halliburton Oil Well Cementing Co. v. Walker, 329U.S. 1, 71 USPQ 175 (1946).  It was due to this Halliburton rule that Congress created 35 U.S.C. §112, sixth paragraph to allow functional claiming.  Thus, the Board found that the Halliburton rule was still in force for claims not invoking 35 U.S.C. §112, sixth paragraph.  Since claims 15 and 26 did not recite structure and were purely functional in nature, claims 15 and 16 violated the Halliburton rule and were unpatentable under 35 U.S.C. §112, first paragraph, for lack of enabling disclosure commensurate with the scope of the claims. 

In summary, the Board affirmed the Examiner’s rejection of claims 1-6, 13 and 16-18 and entered new ground for the rejection of claims 13, 15-18, 26 and 31. 

Significance to Patent Owners

In Ex parte Kenichi Miyazaki, BPAI created new test for 35 U.S.C. §112 to require applicants to ensure language not reasonably capable of dual meanings.  While nominally useful in regards to helping clarify the claims, the decision, if followed, would encourage Examiners to find multiple unreasonable interpretations of claims, and force the applicants to narrow their claims or prove that only one interpretation is reasonable.  Moreover, the Board did not address how both interpretations at issue were “reasonable” as would be understood by one of ordinary skill in the art, and appeared solely to rely on the specification and the claims without establishing the skill or knowledge of those in the art.  Additionally, in attacking functional limitations, the Board is signaling that it will attempt to reign in broad claiming of the type normally exemplified by functional limitations. However, the Board does not appear to address the obvious reality that such limitations, if truly broad, will read on prior art and will be narrowed through ordinary prosecution.  Thus, the new rule applied by the Board, especially outside of a prior art rejection, will encourage piecemeal examination without improving the quality of the resulting patent.

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