Board of Patent Appeals and Interferences Rules on Indefiniteness of the Term “Substantially Filled,” Prima Facie Obviousness in an Engine Cooling Method

By Charles Pierce

In Ex Parte Evans et al. (Appeal 2011-004119; Application serial no. 11/823,993), the Board of Patent Appeals and Interferences reversed examiner rejections under 35 U.S.C. § 112 for indefiniteness, and 35 U.S.C. § 103(a) for obviousness.

Claim 1 of the patent states:

A method for cooling an internal combustion engine using a reduced toxicity, ethylene glycol and water based heat transfer fluid, said method comprising the steps of:

(a) formulating a heat transfer fluid comprising (1) a glycol component consisting of ethylene glycol and propylene glycol, wherein the weight of the propylene glycol is between 5% less to less than 30% of the total weight of the glycol component and wherein the glycol component is less toxic than 10,000 mg/kg on an acute LD50(rat) oral toxicity basis, and (2) water, wherein the water comprises between 40% and 70% by weight of the total weight of the heat transfer fluid; and

(b) substantially filling the cooling system of the internal combustion engine with the heat transfer fluid such that the heat transfer fluid absorbs heat that is produced by the internal combustion engine and releases the absorbed heat to the atmosphere. (emphasis added).

The examiner rejected this claim reasoning that because the term “substantially” is not defined, the specification does not sufficiently describe the invention such that a person of ordinary skill in the art would be reasonably apprised of its scope.  The board disagreed.  They noted that “substantially” was used to describe how much a cooling system should be filled, and any person skilled in the art would know what can be considered substantially filled.  The term “substantially” was used to avoid a strict measurement,  because slight variations in the amount of fluid may still be considered to have filled a cooling system.  The board decided that the claim was sufficiently definite.

The board also disagreed with the examiner’s obviousness rejections.  The examiner’s rejection was that the claims were prima facie obvious.  The board noted that no reference disclosed the weight range of the propylene glycol in the glycerol component, or the weight range of the glycerol in the polyhydric alcohol component.  Because the references also disclosed only the components of the invention, the board ruled that they were not enough for a person of ordinary skill in the art to create the claimed cooling method.

Cell Phone Network Patent Survives § 112 Attacks in Federal Circuit

By Chris Reaves

HTC Corporation v. IPCom GmbH & Co., KG, No. 2011-1004, Fed. Cir. Jan. 30, 2012

In a recent infringement suit, a patent for a cell phone network mobile station narrowly survived several attempts at invalidation through indefiniteness.  The Federal Circuit applied numerous rules of claim interpretation, especially for means-plus-function claims, and reminded the defense of the importance of addressing all issues at the trial level.  The case serves as a good lesson in “what not to do” for both prosecutors and litigants.


IPCom GmbH & Co., KG owns US Patent No. 6,879,830 (‘830) and other patents, which go to cell phone networks and their methods.  ‘830 in particular discusses an efficient cellular phone network “handover” – the process by which one cell tower takes over a call from another as the phone moves from place to place.

IPCom and the HTC Corporation countersued each other for, respectively, infringement of three of IPCom’s patents, including ‘830, and declaration of non-infringement.  During the trial’s Markman hearing, HTC moved for summary judgment of invalidity of ‘830 claims 1 and 18.  The district court found that the means-plus-function portion of these claims had the required corresponding structure.  However, it also found that the claims included both method steps and an apparatus, making them indefinite under the rule of IPXL Holdings v.  It therefore invalidated both claims.

On stipulation of the parties, the decision was promptly declared final and certified for appeal under Fed. R. Civ. P. 54(b).  Judges Bryson, Linn, and O’Malley of the Federal Circuit heard the appeal.

IPXL Indefiniteness Does Not Apply to “Preamble-Within-A-Preamble”

Claim 1 of ‘830 recites, in total:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a first base station,

holding in reserve for the link resources of the first base station, and

when the link is to be handed over to the second base station:

initially maintaining a storage of the link data in the first base station,

initially causing the resources of the first base station to remain held in reserve, and

at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

Claim 18 and, by stipulation, claim 16 differ only in ways “immaterial to this appeal.”

The district court had construed the claims to state that the mobile station “achieves a handover” which is then described as a series of steps.  Because the claim described the mobile station both in terms of this method and separately in terms of “an arrangement,” the court therefore invalidated it as indefinite.

The Federal Circuit, however, determined that the “that achieves a handover” clause described “network”, not “mobile station.”  First, “[m]odifiers should be placed next to the words they modify”, and the clause was closer to “network.”  Second, the repetition of “mobile station” in the seventh paragraph “would read in a disjointed manner” if the preceding functions also referred to the mobile station.  And third, the specification confirmed that the base stations of the network, not the mobile station, perform the functions in the handover.

HTC and the district court both tried to overcome this language by pointing to the prosecution history, but the Federal Circuit recalled Phillips v. AWH for the principle that prosecution “often lacks the clarity of the specification and thus is less useful for claim construction purposes.”  Although the applicants had referred to the “claimed process” of claim 1 during prosecution, the Federal Circuit found this insufficient to overcome the “plain language of the claims and the specification” that showed the mobile station was an apparatus.  A single reference to “steps” was similarly unpersuasive.

As the claims did not claim both the apparatus and the process, the Federal Circuit ruled that they did not violate the rule of IPXL.  They were instead merely in a “preamble-within-a-preamble” form, which was “unconventional” but valid under Microprocessor Enhancement Corp. v. Texas Instruments.

General Structure for Means-Plus-Function Claims May Be Implied, Not Explicit

The court then examined HTC’s alternate argument that the claims were indefinite under § 112 ¶ 6.  The parties had agreed that the “arrangement for reactivating” in all three claims was a means-plus-function limitation, which requires disclosure of a corresponding structure in the specification.  But the district court found, and the Federal Circuit agreed, that no literal disclosure was necessary, because a person skilled in the art “would understand that the mobile device would have to contain a processor and transceiver.”  Expert testimony, including the deposition of HTC’s own expert, supported this assessment.

The Federal Circuit also noted that a detailed hardware configuration was not necessary; “reference to such general-purpose processors will suffice” to make the claim definite if the description also discloses an algorithm that “describe[s] a means for achieving [the reactivating] outcome, not merely the outcome itself.”  At the trial level, HTC had argued exclusively that the hardware disclosure was insufficient with or without algorithms, and did not contend in the alternate that the disclosed algorithms were inadequate, even when IPCom argued in briefs that they were.  Therefore, the Federal Circuit did not let HTC raise the argument on appeal, finding no reason not to apply the general appellate policy against considering issues not raised at trial.

With no other cause to invalidate, the panel reversed, declaring all claims valid.

Post-Case Analysis

The Federal Circuit creates little new law here, but reminds us of some existing principles for both prosecutors and litigators.  Prosecutors are reminded of the importance of clarity in drafting.  Although IPCom’s claims survived their second interpretation, clearer attachment of nouns to modifiers would have avoided the initial invalidation.  Simple use of commas or semi-colons to break up the clauses, and then leading each clause with its own element, can be an invaluable rule of thumb.  For instance, opening with “A mobile station for use with a network, the network including…” would have made it undeniable what the following paragraphs referred to.

Similarly, although the courts will treat a structure as implicitly disclosed when it is “understood” by those skilled in the art, it is better to be explicit.  What is “understood” can vary from expert to expert, and had HTC’s own expert not admitted to the validity of IPCom’s position, the patent might well have failed on this point.  Also, this rule has less benefit when the structure is not a processor or similar; that is, one that must be thoroughly defined on its own terms instead of in the context of algorithms.

Means-plus-function claims are especially vulnerable to a few mistakes that IPCom nearly stumbled over.  Prosecutors should always remember to check their claims for IPXL-style indefiniteness, as the drafter is already thinking in terms of the corresponding process and may forget to make the distinction.  Double-checking for the appropriate structure for each function – including the algorithm, if software is involved – is also vital.

Finally, in all cases, proofreading is key.  A second pair of eyes to check for these and other mistakes during drafting can save your client from both a higher risk of invalidity and unnecessary legal fees the first time he tries to enforce.

Litigators, meanwhile, are reminded of the importance of attacking the opponent from every reasonable angle; in this case, to challenge the structure disclosure on both hardware and software.  It is sometimes splitting hairs to say what specific sub-(sub-sub-)issues a party has failed to address, and HTC might have argued that, by bringing up structure disclosure at all, they preserved all aspects of it for appeal.  But at minimum, once IPCom reminded HTC of the algorithm issue in its own briefs, HTC needed to respond.  Leaving that argument unchallenged cost them dearly.

The opinion is available at:

Oral arguments may be heard at:

Federal Circuit Finds District Courts Can Correct Obvious Errors Without Certificate of Correction

In CBT Flint Partners, LLC v. Return Path, Inc., 99 USPQ2d 1610 (Fed. Cir. 2011), CBT Flint Partners, LLC (“CBT”) appealed the District Court for the Northern District of Georgia’s grant of summary judgment of invalidity of claim 13 of U.S. Patent 6,587,550 (“the ‘550 patent”).  CBT owns the ‘550 patent, as well as another patent, the ‘114 patent, which both relate to methods and systems for charging a fee for sending spam email to recipients.  In the preferred embodiment of the ‘550 patent, the invention is implemented as part of an Internet Service Provider (“ISP”).  When a sender attempts to send spam emails over the ISP network, the patented system determines whether this sender is an “authorized sending party,” i.e., a party who has agreed to pay a fee to the ISP.  If the sender is an authorized sending party, the ISP will forward its spam emails to the intended recipients.  If the sender is not an authorized sending party, the patented system will send a message to the sender, giving the sender the option to pay the fee and become an authorized sending party.  If the sender does not pay this fee, its spam emails will not be forwarded over the network.

In August 2007, CBT sued Return Path, Inc. and Cisco Ironport Systems, LLC (“the Defendants”), alleging infringement of both the ‘550 and ‘114 patents by the Defendants’ “Bonded Sender” system.  This system analyzes incoming emails to determine whether they came from an authorized computer and, if so, forwards them to their intended recipients.  CBT asserted infringement of claim 13 of the ‘550 patent, as well as infringement of ten claims of the ‘114 patent. Continue reading Federal Circuit Finds District Courts Can Correct Obvious Errors Without Certificate of Correction

Federal Circuit Invalidates Software Claim for Indefiniteness

Federal Circuit Finds Means plus Function Element in Claim Indefinite Since Specification Did Not Describe Structure in Specification

In Blackboard, Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2D 1481 (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit (CAFC) deliberated on two issues raised by the respective parties on appeal from the United States District Court for the Eastern District of Texas.  Specifically, Desire2Learn contested the district court’s holding of infringement of claims 36-38 of Blackboard’s U.S. Patent No. 6,988,138, which relates to an Internet-based educational support system and corresponding methods.  In turn, Blackboard cross-appealed the District Court’s ruling, on summary judgment, that claims 1-35 of the ‘138 patent are indefinite.

Single login feature

Turning to the first issue, Desire2Learn argued that claims 36-38 do not include a “single login” limitation for the recited method of providing an online education system, and thus were anticipated by two prior art references.  The ‘138 patent discloses a system that allows for online management of information relating to individual courses.  Of particular benefit is the ability to allow a user to use a single login to access multiple courses with multiple respective roles in those courses (i.e., the “single login” limitation).  For example, a graduate student who is a student in a first course and a teacher in a second course could use a single login to access both courses and access materials for both courses according to the corresponding role of the graduate student in the respective course. 

Blackboard asserted that the “single login” feature is its patent’s essential improvement over prior art systems, and is recited in every claim including independent claim 36 (from which claims 37 and 38 depend).

Claim 36 recites:

An [sic] method for providing online education… comprising the steps of:

establishing that each user is capable of having redefined [sic: “predefined”] characteristics indicative of multiple predetermined roles in the system and each role providing a level of access to and control of a plurality of course files;

providing a predetermined level of access and control over the network to the course files to users with an established role as a student user enrolled in the course; and

providing a predetermined level of access and control over the network to the course files to users with an established role other than a student user enrolled in the course.

Though claim 36 does not explicitly provide for a single login, Blackboard argued that such a single login is required because the term “user” refers to an electronic user account that is defined by a single user name and password combination.  Thus, the user being capable of having multiple roles is an electronic user having a single name and password combination, i.e., a single login. 

For support, Blackboard pointed to the specification, which sometimes uses the word “user” to ostensibly refer to an electronic representation of a person.  However, the Federal Circuit (Judges Bryson and Moore, andCudahyby designation) disagreed.  Specifically, the Federal Circuit reasoned that the specification typically uses the term “user account” to refer to the electronic representation of the user.  Moreover, aside from a few shorthand references, the specification also typically uses the term “user” to refer to a flesh-and-blood person.  Also, of the four embodiments described in the specification, only one includes the single login feature.  Therefore, the Federal Circuit found that specification does not require that the recited “user” necessarily refers to an electronic user in the context of a single login.

The Federal Circuit further reviewed other claims and noted the relationship between claim 1 of the ‘138 patent and claims 24 and 25 which depend from claim 1.  While claim 1 includes the same pertinent language as claim 36, dependent claims 24 and 25 recite the single login limitation.  Thus, the Federal Circuit reasoned that as claim 1 cannot be construed to require a single login without making claim 25 redundant, claim 36, too, does not require the single login.  Therefore, in its decision, the Federal Circuit affirmed that a dependent claim adding a particular limitation gives rise to the presumption that the limitation is not present in the independent claim.

As a result, the Federal Circuit held that, as there was not recited single login feature, claims 36-38 were invalid for anticipation by prior art systems. 


Turning now to the 35 U.S.C. 112 issue, Blackboard challenged the district court’s invalidation of claims 1-35 as indefinite.  Referring to independent claim 1 as representative (claims 2-35 depend from claim 1), claim 1 includes four means-plus-function clauses, including “means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course.”  As the limitation is written in means-plus-function form, it is construed to cover only the structure described in the specification and equivalents thereof, as prescribed by 35 U.S.C. 112, paragraph 6.

Blackboard argued that the structure performing the assigning function is a software feature known as the “access control manager” (ACM), which is described in only one paragraph of the specification:

Access control manager 151 creates an access control list (ACL) for one or more subsystems in response to a request from a subsystem to have its resources protected through adherence to an ACL.  Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving confidentiality of information.

The Federal Circuit upheld the district court’s decision that claims 1-35 are indefinite, because the specification failed to sufficiently describe the means by which the ACM creates an ACL.  In particular, the Federal Circuit decided that the lone paragraph describing the ACM does not describe a structure, but merely puts forth an abstraction defined only by a function.  That is, “[t]he specification contains no description of the structure or the process that the access control manager uses to perform the ‘assigning’ function.  Nor has Blackboard ever suggested that the ‘access control manager’ represents a particular structure defined other than as any structure that performs the recited function.”

Blackboard argued that reference to a general-purpose computer satisfies the requisite structural disclosure for the means-plus-function limitation.  Citing Aristocrat Techs. Austl. PTY Ltd. V. Int’l Game Tech., 521 F.3d 1328, 1334 (Fed. Cir. 2008), the Federal Circuit countered that relying on a general structure is equivalent to saying “that the function is performed by a computer that is capable of performing the function.”  Moreover, citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008), the Court further noted that “when a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.”  In other words, the Federal Circuit concluded that the specification only describes the function to be performed, but says nothing about how the ACM performs the function (i.e., how the ACM creates the ACL).

Blackboard also argued that the process of creating an ACL through software is well known to one of ordinary skill in the art.  The Federal Circuit was unmoved by this argument, emphasizing that the question before it is not the ability of one of ordinary skill in the art, but whether the specification sufficiently describes a corresponding structure to a claimed means.  In particular, the Court asserted that a patentee cannot avoid sufficiently disclosing a structure because someone of ordinary skill in the art could come up with a means to perform a claimed function.  “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.”

Thus, in holding claims 1-35 to be indefinite, the Federal Circuit concluded that Blackboard is attempting to capture any possible means for performing the assigning function, in violation of 35 U.S.C. 112, by disclosing the means only as a general structure to perform the function.

Significance for Patent Applicants

As set forth below in the feature comment The Heightened Disclosure Requirement for Software Claimed Using Means-Plus-Function Limitations, when describing an invention which is realized using software, it is important that the specification provide a heightened level of detail.  While there is no brightline test, this detail must be more than merely an indication that the particular module can be implemented using a general purpose computer.  Instead, the patent applicant needs to provide details as to how the module operates or is constructed, possibly through the use of flowcharts.  While seemingly limited to limitations relying on 35 U.S.C. 112 ¶6, it is possible that this logic could be extended to other types of functionally-described elements.  Such a potential would appear to be higher during prosecution where the Examiner is entitled to take a broader interpretation of the claims, as demonstrated by the Board of Patent Appeals and Interferences in Ex parte Kenichi Miyazaki, 89 USPQ2d 1207 (BPAI 2008).   Thus, while it is unlikely that levels of detail such as copies of source code would be required, when drafting applications which are being implemented using software, applicants need to ensure that the specification includes structural detail as to the implementation of the software modules.

Federal Circuit Holds Standard for Claim Interpretation for Purpose of Interference Is Distinct For Claim Interpretation for Purposes of 35 U.S.C. §§102 & 112

In Agilent Tech., Inc. v. Affymetrix, Inc., Civ. Case No. 2008-1466 (Fed. Cir. June 4, 2009), Agilent owns Schembri patent 6,513,968 (“Schembri”) issued on February 4, 2003 and claimed priority to an application filed August 21, 1998.  Affymetrix believed it had earlier invented the claimed methods of the Schembri patent and copied the claims of the Schembri patent into its Besemer patent application 10/619,244 (“Besemer”) to provoke an interference.  The Besemer application claimed priority through a string of continuations to a patent application filed June 7, 1995, which made Affymetrix the senior party to the interference under 37 C.F.R 2.96.

The disputed claims in the Besemer application and the Schembri patent deal with “microarray hybridization,” which is a technique for performing multiple genetic analyses on a small fluid sample.  Specifically, claim 20 of the Schembri patent and claim 66 of the Besemer application relate to a method for mixing a fluid sample during hybridization, by providing and moving a bubble in a fluid in a closed chamber. (Schembri Patent col. 10 ll. 33-45, Besemer application at 39).

Agilent filed a motion before the Board challenging the validity of the copied claims in the Besemer application, asserting that the written description was inadequate under 35 U.S.C. §112, ¶ 1, to show actual possession of the bubble-mixing invention.  The Board found that the Besemer application showed support for the claimed invention, awarded priority to Affymetrix, and cancelled the contested claims of Agilent’s Schembri patent. 

Agilent appealed to the U.S. District Court for the Northern District of California under 35 U.S.C. § 146.  The parties submitted new expert reports and testimony from their respective expert witnesses, as well as cross motions for summary judgment on the written description issue.  The District Court affirmed the Board and granted Affymetrix’s motion for summary judgment that the Besemer application satisfied the written description requirement.  Agilent appealed the District Court’s judgment regarding claim construction and the written description requirement.

First, Agilent took issue with the District Court’s use of the Affymetrix application to construe the claim language.  To determine which specification to utilize to construe the claims, the Federal Circuit looked to its prior decisions in In re Spina, 975 F.2d 854 (Fed. Cir. 1992), and Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997).

In Spina, the applicant copied a claim from the “Barron” patent to provoke an interference, similar to Affymetrix’s actions.  The Board viewed the claim in light of the Barron disclosure, from which the claim had been copied.  The Court held that this interpretation was correct.  “When an interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied.” In re Spina, 975 F.2d 854, 856 (Fed. Cir. 1992).

In Rowe v. Dror, Rowe copied several claims from the Dror patent to provoke an interference.  Dror filed a motion seeking judgment against Rowe on the ground that a third party anticipated some of Rowe’s claims corresponding to the interference count.  On appeal, the Federal Circuit held that Rowe’s specification should be used to interpret Rowe’s claims because the question was one of novelty or non-obviousness.  The Court held that the PTO should interpret the claim in light of its host disclosure, just as it would during ex parte prosecution. Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1987).  The Federal Circuit also explicitly distinguished Rowe from Spina due to the different question each case answered.  The Court held that the Spina rule was applicable when the question turned on whether the copying party’s specification provided an adequate written description for the copied claims.  The Rowe rule would apply when the question of the claim’s validity under 35 U.S.C. 102 or 35 U.S.C. 103 was at issue.

In reviewing these cases, the Federal Circuit held that the Spina rule applied, and reversed the decision of the District Court which used the Affymetrix application to construe the copied claims.  The Federal Circuit also rejected Affymetrix’s argument calling for the application of 37 C.F.R. 41.200(b), which calls for the broadest reasonable construction of claim language in light of the specification in which it appears.  For support, the Court pointed to it decision in Rowe, which asserted that judicial precedent is as binding on administrative agencies as are statutes.  Thus, the Federal Circuit held that Spina would be the applicable rule for this issue, and the Agilent specification would be utilized to construe the contested claims.

The Federal Circuit then concluded that the District Court erroneously interpreted the claim term “a closed chamber” to mean “a system of enclosures.”  The District Court based its interpretation on Figure 28 of the Besemer application, to include the cavity 310, containers 2810 and 2820, and associated tubes.  The Federal Circuit agreed with Agilent’s interpretation that the term was defined by the claim itself.   The claim recites a closed chamber defined by “a first substrate and a second substrate having inner surfaces.”   The Court interprets the claim to require that the chamber be bound by a first substrate and second substrate, and thus incapable of ambiguously spanning a “system of enclosures.”  Rather, the Court looks to the claim language to construe the closed chamber as being explicitly defined by two surfaces.  Further, the Federal Circuit asserts that the Schembri specification is replete with references and support for its interpretation of “closed chamber.”  Finally, the Federal Circuit rejected the District Court’s interpretation as frustrating or even completely ignoring claim language requiring that “at least one of said inner surfaces is functionalized…”  Under a system definition, the Federal Circuit asserted that the Schembri specification provided no guidance as to which surface would be functionalized.  Thus, the Court rejected the District Court’s expansive definition of “closed chamber” and relied instead on the language of the claim and the Schembri specification to define the term.

The Federal Circuit also agreed with Agilent’s contention that the District Court erred in construing a “closed chamber… adapted to retain a quantity of fluid” as a chamber that is “capable of being sealed or set apart from its surroundings to retain a quantity of fluid.”  Citing Merck, the Federal Circuit held that “closed” should be given further meaning because a claim construction that gives meanings to all the terms of the claim is preferred to one that does not do so.  Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).  The Court also looked to Mangosoft to reject the District Court’s construction that gave no meaning to a term (“closed”) that was not already implicit in the rest of the claim.  Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed. Cir. 2008).  According to the Federal Circuit, closed was not the same thing as closable because equating the two terms was contrary to the plain language of the claim.

The District Court explicitly recognized that the ordinary meaning of the term “closed” in the context of a fluid retention chamber is “not open” or “sealed,” meaning that the chamber does not allow the fluid to escape.  However, the District Court compromised this ordinary meaning to fit its erroneous assumptions that the claims should be construed in light of the Besemer application and that a “closed chamber” can mean a “system of enclosures.”  The Schembri disclosure enables the ordinary meaning of the term to be utilized, and provides unambiguous and repeated support for such an interpretation.  Specifically, the Schembri disclosure defines both a chamber and a closed chamber, explaining that the chamber becomes a closed chamber with a substrate placed on top of its seal to close it. 

Thus, the Federal Circuit reversed the District Court’s construction because it was not grounded in the proper disclosure, and did not honor the customary meaning of the claim language to one of skill in the art.  The Federal Circuit averred that the proper meaning of a “closed chamber… adapted to retain a quantity of fluid” is “an enclosed cavity defined by the inner surfaces of the first and second substrates, from which there is no egress of fluid.”

Next, the Federal Circuit examined whether the grant of summary judgment that the Besemer application had adequate possession of the claimed invention at the time of invention was proper.  First, the Court cited In re Wright to note that the written description doctrine prohibits new matter from entering into claim amendments, especially during the continuation process.  In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989).  The court further observed that the written description requirement is a question of fact that requires that the specification must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.” Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 110 (Fed. Cir. 1994); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).  Finally, the court declared that patent applications do not enjoy a statutory presumption of validity.  Rather, Agilent’s burden of proving a lack of written description in the Besemer application is merely a preponderance of the evidence.  Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1365 (Fed. Cir. 2004).

Before addressing the substantive merits of the grant of summary judgment, the Federal Circuit agreed with Agilent’s contention that the District Court erred by adopting an incorrect standard of review for new evidence that had not been before the Board.  Under 35 U.S.C. 146, a party dissatisfied with the Board’s decision may initiate a civil action in a U.S. District Court to bring forth “further testimony.”  Under this section, if the parties present new evidence to the District Court that is in conflict with the record before the Board, the District Court must make de novo factual findings regarding the new evidence. 

Agilent initiated an action under Section 146 in response to the Board’s finding that it had not advanced any “meaningful evidence” to show that one of ordinary skill in the art would not have understood Besemer’s application to inherently disclose using bubbles to mix fluid in a closed chamber, as required by the contested claims.  The Board specifically told Agilent that, for example, an expert declaration that one of ordinary skill in the art would not have had the requisite knowledge or skills to conclude from the Besemer application that the inventor was in possession of the invention would have been useful.  Agilent submitted deposition testimony from Affymetrix’s expert to remedy the evidentiary deficiency.  Specifically, Affymetrix’s expert explained that bubbles were not inherently present in the “vortexer” embodiment of Figure 29 of Besemer’s disclosure.  Further, in the embodiments of Figures 28 and 30, the chamber was not closed.  The parties had already agreed that Figures 28-30 of Besemer’s application were the only embodiments relating to the bubble mixing of the contested claims. 

The District court dismissed this evidence, concluding that Agilent had not presented any new evidence concerning the written description issue, and deferentially reviewed the Board’s decision for substantial evidence.  The Federal Circuit asserted that this deferential review was legal error because Agilent had submitted new evidence that specifically pertained to filling evidentiary gaps observed by the Board.  The Court emphasized that Section 146 allowed a litigant to shore up evidentiary gaps that may have been evident by the end of the inter partes interference procedure.  Here, the Court recognized that Agilent was notified of such evidentiary gaps and took measures to fill them.  The Federal Circuit asserted that evidence submitted by Agilent in the Section 146 action should have been considered by the District Court.  Thus, the Federal Circuit examined Agilent’s evidence without deference to the Board’s finding.

As mentioned above, the record showed, and the parties seemed to agree, that the only embodiments depicting bubble mixing in the Besemer application were those illustrated by Figures 28-30, i.e. the “circulator” and “vortexer” embodiments.  Agilent contended that these embodiments of the Besemer application failed to provide written description support for the claims at issue.  First, the “circulator” embodiments (as illustrated in Figures 28 and 30 of the Besemer application) failed to describe a method that takes place in a closed chamber.  Second, the “vortexer” embodiment (as illustrated in Figure 29 of the Besemer application) failed to describe bubble mixing at all. 

Given the Federal Circuit’s interpretation of a “closed chamber… adapted to retain a quantity of fluid,” the Court initially looked to the Besemer specification to disclose such an enclosed cavity from which there is no egress of fluid.  Upon close examination of the Besemer disclosure, the Court found that the “circulator” embodiments of Figures 28 and 30 did not disclose a closed chamber that would prevent the escape of fluid.  Rather, those embodiments required the circulation of fluid in and out of the cavity to facilitate mixing.  Affymetrix’s own expert affirmed that requirement in his deposition to the District Court.  Thus, the “circulator” embodiment of Figures 28 and 30 provided no written description support for the bubble mixing of the contested claims. 

The Federal Circuit then turned to the “vortexer” embodiment of Figure 29, in which it found a closed chamber.  The Court observed that the “vortexer” embodiment allowed the introduction of fluid into a closed reaction chamber from which the fluid did not egress.  To fully satisfy the written description requirement, this embodiment must then also describe “providing a bubble in the fluid” and “moving a bubble within the fluid to result in mixing,” as required by the contested claims.  However, both mentions of bubbles in the Besemer disclosure relied on by Affymetrix were tied to the “circulator” embodiments, where the bubbles are created by forcing fluid in and out of the chamber.  The Court found that this creation of bubbles was inconsistent with the requirement of a “closed chamber.” 

The Court further asserted that Affymetrix’s argument that the “vortexer” embodiment inherently produces bubbles was contradicted by Affymetrix’s own expert testimony that bubbles were not necessary generated in the fluid in the system as depicted by Figure 29 (the “vortexer” embodiment).  The Federal Circuit cited In re Oelrich to note that inherency requires that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.  In re Oelrich, 666 F.2d 578, 581 (C.C.P.A 1981).  The mere fact that a certain thing may result from a given set of circumstances would not establish inherency. Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001).  Given Affymetrix’s expert testimony, the Court declared that Affymetrix’s argument that the “vortexer” chamber might include an unmentioned void that might result in bubble creation was insufficient to establish inherency.

Thus, the Federal Circuit failed to find any embodiments in the Besemer application that disclosed bubble mixing in a closed chamber and concluded that the District Court erred in its grant of summary judgment in Affymetrix’s favor.  The Federal Circuit stated that Affymetrix copied Agilent’s claims into its continuation application despite having failed to disclose the claimed invention.  Therefore, the Court reversed the District Court and granted Agilent’s motion for summary judgment regarding the written description issue.

The Federal Circuit reversed the District Court’s claim construction because it was not grounded in the proper disclosure, and did not honor the customary meaning of the claim language to one of skill in the art.  The Federal Circuit stated that the originating disclosure should be controlling for claim construction when determining if the host application has adequately supported the subject matter claimed by both parties.  Further, the ordinary meaning of the claim language should be recognized, if supported by the originating disclosure.  The Federal Circuit also reversed the grant of summary judgment regarding Affymetrix’s possession of the claimed invention at the time of invention.  Here, the Federal Circuit reversed the District Court and considered new evidence submitted by Agilent to the District Court.  The Federal Circuit stressed that litigants are given the opportunity through 35 U.S.C. 146 to satisfy evidentiary gaps brought to light at the Board and stated that evidence submitted through a 146 action should be taken into account.  In light of that new evidence, and upon close examination of the Besemer disclosure, the Federal Circuit found no evidence that the disclosure supported the invention as claimed.

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.

Federal Circuit Finds Lack Of Antecedent Basis Does Not Automatically Render Claim Indefinite Without Evidence Of Confusion As To Claim Scope

In Energizer Holdings, Inc. v. International Trade Commission, Energizer Holdings brought an action under 19 U.S.C. §1337 to prevent the importation of alkaline battery cells which Energizer asserted infringed claim 1 of Energizer’s U.S. Patent No. 5,464,709.  Claim 1 recites as follows:

1. An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.

After the proceedings, the Administrative Law Judge initially found that claim 1 was valid and infringed by the importation.  However, the International Trade Commission overruled the Administrative Law Judge and found claim 1 invalid under 35 U.S.C. §112, paragraph 2, for being indefinite to the since claim 1 did not previously recite an zinc anode prior to reciting “said” zinc anode.  

On appeal, the Federal Circuit reviewed the International Trade Commission’s finding of invalidity de novo since the issue is strongly intertwined with claim construction.  The Federal Circuit also noted that, while the lack of antecedent basis can cause indefiniteness, invalidity based upon indefiniteness must be based on the totality of the claim as read in the context of the specification by one skilled in the art.  According to the Federal Circuit, “[w]hen the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of ‘antecedent basis.'” As such, the Federal Circuit held that the requirement of antecedent basis is “a rule of patent drafting, administered during patent examination,” and is not an automatic grounds for invalidity. Continue reading Federal Circuit Finds Lack Of Antecedent Basis Does Not Automatically Render Claim Indefinite Without Evidence Of Confusion As To Claim Scope