Monday, February 8, 2010

Case law you can use: Examiner cannot use same structure to disclose separate claimed elements

Takeaway: The BPAI has interpreted Federal Circuit case law to say it's improper for the Examiner to rely on the same structure as disclosing two separate claimed elements. In several anticipation rejections where this issue arose, the Board used the following cites:
Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not meet claim element requiring at least two conveyors).
In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means).

Caveat: Note that the Board has limited its application of this doctrine to anticipation rejections. Although the Board didn't say one way or the other, I'm not sure that this doctrine applies to obviousness. Standard obviousness analysis would seem to support a prima facie §103 single reference rejection, where the reference showed a single element, with the proposed modification being "it would be obvious to replace the single element performing two different functions with two different elements". Then the Applicant is free to argue why it wouldn't be obvious to do that.

Here are some BPAI decisions where the Board has applied the doctrine from In re Robertson and Lantech to anticipation rejections.  

Ex parte Weideman: The claims were directed to a vehicle seat. The Board agreed that the reference disclosed the claimed seat back and seat bottom, but found the Examiner's rejection was "flawed."
The Examiner finds that the horizontally extending portions of frame members 3, 4, also identified more specifically by reference numeral 7, not only constitute part of the seat bottom, but also constitute the structure in Lohr that reads on the claimed “center support extending forwardly from [the] central pillar”. Consistent with the principle that all limitations in a claim must be considered to be meaningful, it is improper to rely on the same structure in the Lohr reference as being responsive to two different elements (seat bottom and center support) in claim 1.
(Weideman, internal citations omitted.)
Ex parte Koutsky: The claims were directed to a vehicle seat suspension apparatus. The Board agreed that the flange and rollers in the reference correspond to the claimed "means for allowing reciprocating movement," but found the Examiner's reading of the reference with respect to other claimed elements was in error:
However, the Examiner uses the same [flange] 56 and guide rail 34 as the elongated guide and guide engaging member. Thus, the Examiner has used the same element or structure in the Koutsky reference to satisfy two different limitations from the claimed subject matter. However, when a claim requires two separate elements using one element construed as performing two separate functions will not suffice to meet the terms of the claim. Accordingly, it is our finding that Koutsky does not anticipate the claimed subject matter on appeal.
(Koutsky, internal citations omitted.)

Ex parte Konstant: The claims were directed to a storage rack, which included a horizontal deck beam interconnected between two columns. The beam included an upper flange supporting a locking cross bar, and an outer face in which an aperture was located. The Examiner applied this reference:
The Examiner found the reference's support surface (18) satisfied the "upper flange" (with locking cross bar 30), and that the same support surface 18 satisfied the claimed outer face containing an aperture (20). The Board reversed the rejection:
The Examiner erroneously read both the upper flange/upper support width and the outer face on the same structure in Mulholland. Consistent with the principle that all limitations in a claim must be considered to be meaningful, it is improper to rely on the same structure in the Mulholland reference as being responsive to two different elements (the upper flange/upper support width and the outer face) in claims 1, 10, and 18.
(Konstant, internal citations omitted.)
Note that these are all mechanical cases, by which I mean there was a lot of structure in the claims. I don't know whether this reasoning can be adapted to cover functional claims. That is, if the Examiner uses a single box in a block diagram for teaching the claimed elements "network traffic monitor" and "policy mechanism for applying a policy to the network traffic," I'm not sure arguing "improper to rely on the same structure in the reference as teaching two different elements" will work — a box in a block diagram of a computer system may not be "structure" in the same way that a flange and a roller are "structure."


  1. Karen, this is great stuff. I'm looking forward to more of your "Case Law you can use" postings - it's a super idea.

  2. This whole line of reasoning behind these cases seems rather unpersuasive. Just because you seperate your pieces while reciting them in a claim doesn't strike me as a reason why something in a reference can't be both. Oooo, look at me, I'm seperating pieces!!!! I'm inventing!!!! Idk about that...

  3. >"Oooh, look at me, I'm separating pieces!!I'm inventing"

    If your point is that it's sometimes obvious to take one piece performing two different functions and replace it with two separate pieces .... well, then maybe an obviousness rejection is more appropriate.

  4. I see my original post didn't say that the cases I referred to involved anticipation, not obviousness.

    It's not really clear from the decisions that the doctrine is truly *limited* to anticipation, but I'd say the reasoning is much less persuasive in an obviousness context.

    I'll revise the post to note the anticipation context.

  5. Don't bother, the doctrine is just as applicable in the obviousness setting as well. And it's just as rtarded as it is in the anticipation setting.

    Trust me, I know both of those things, I deal with it on a daily basis.

    Oh, and you're wrong about my point above, my point above was that it is rtarded to even consider letting someone off the 102 or 103 hook because they separated some pieces save in perhaps some extraordinary circumstance. If the pieces are amenable to such a designation in the reference then by all means, designate. Especially if one of skill would so designate.