Board decisions involving the Wayback Machine to show status as prior art (Part I)

Long ago I wrote a series of post discussing the use of web pages as prior art. In one of those posts (here), I mentioned the use of www.archive.org  (a.k.a. the "Wayback Machine"), which is an archive site of web pages as they existed in the past. An Examiner can't allege that a web page was available as of your application's past filing date if all he has is the page retrieved as of the examination date, However, he can use the Wayback Machine to navigate to that same web page, retrieve a copy as it existed as of a particular past date, and use the page retrieved via the Wayback Machine as the reference.

Since my original post back in 2009, I've come across a few more cases where the Applicant tried to disqualify a reference on the basis of its retrieval via the Wayback Machine. Generally, it's a losing battle: as long as the Examiner identifies the page and retrieval date in the proper manner, the Board views such references as "printed publications" under § 102(b) or § 102(a).  In today's post, I'll discuss a few of these Board decisions, and highlight some unpersuasive arguments made by Applicants.

To qualify as a "printed publication," case law requires that the reference be disseminated to persons in the art. For example, MPEP § 2128 states that "[a] reference is proven to be a 'printed publication' 'upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981)."

In Ex parte Rowse, the Applicant attacked the Examiner's use of the Wayback Machine on this basis. The Applicant argued that "the Examiner has provided no evidence that the Xactware reference qualifies as a printed publication other than asserting that 'the Internet Archive is a tool used to access internet pages that were published and publicly accessible in the well-documented past.' " Next, the Applicant referred to the "dissemination" requirement in MPEP § 2128, and then continued as follows:

Regarding "public dissemination," pages on the World Wide Web are not "disseminated" - they are "browsed" using a "Web browser" - the antithesis of dissemination. Many web pages are never even browsed. Regardless, the Examiner has submitted no evidence to show that the Xactware reference was ever "disseminated" to members of the public, or "browsed" by members of the public, prior to the applicants' date of invention. Regarding "public availability," the Examiner has made no showing that the Xactware reference was catalogued, indexed or searchable in any publically-available database prior to the applicants' date of invention.
(Emphasis added.)

The Board in Rowse found that the Examiner had made a prima facie case of the reference's status as prior art. The Board did not specifically address the dissemination argument, addressing instead the general argument that the Examiner had not provided evidence of publication. The Board first noted that in an ex parte proceeding, the rules of evidence are relaxed when demonstrating prima facie unpatentability. The Board then explained that

Appellants have not provided any evidence to show that the website from which Xactware was retrieved is not reliable as to presumed dates of publication. Nor have Appellants provided any other evidence tending to show that the content described by Xactware was not publicly available on the presumed dates.
(Emphasis added.)

The Board has also been unpersuaded by Applicant arguments that the Wayback Machine is not appropriate to show prior art status because it's not reliable. In Ex parte Hicks, the Applicant argued that “per the explicit terms of use for the Internet Archive Wayback Machine [mentioned on the archive site itself], the January 21, 2005 archive is not guaranteed to be accurate, current, complete, reliable, secure or error-free.” (Emphasis added.) The Applicant further asserted that "the Internet Archive does not guarantee that the data listed for January 21, 2005 is what was actually archived or if anything at all was even archived for that date." The Applicant concluded that the Wayback Machine is therefore "not a valid or reliable resource for establishing prior art."

The Examiner's Answer noted that Applicant had not provided any evidence to demonstrate that the archive date was invalid or that the web page was not accessible to persons of skill in the art. The Applicant filed a Reply Brief stating that:

Notwithstanding the well-recognized difficulty of proving a negative, Appellants' representative has performed an Internet search and has been unable to locate any other evidence indicating that the FFHD reference was  published  prior  to Appellants'  filing date. The only evidence of record in support of a prior publication date is from a single third party source that per it's own terms of use may not be accurate.

The Board in Hicks appeared to address the Applicant's unreliability argument by shifting the burden to the Applicant:

Electronic documents are archived on the Wayback Machine and are dated as of the archived date of the website. Appellants do not indicate that the archive date provided for FFHD by the Wayback Machine was generated other than in the normal course of operation of this site. There is no indication that this date was arbitrarily assigned or that the origin of document itself is suspect.

The Applicant in Hicks also tried another argument, characterizing the "URL date indicated by the Internet Archive Wayback Machine" as "nothing more than a third party assertion."

A publication date cannot be established based on an uncorroborated third party assertion unsupported by any affidavit or declaration. If all that was required to establish a publication date was a third party assertion unsupported by any affidavit or declaration, then any reference could be turned into prior art merely by finding a third party willing to place a prior publication date on the document. Such uncorroborated third party assertions unsupported by any affidavit or declaration are not sufficient evidence.  If an Applicant  wishes  to  submit an assertion by a third  party as evidence, e.g., in support of a Rule 131 or 132 submission, then the third party assertion is required to be supported by an affidavit or declaration. The Examiner should be held to no less of a standard. Here, the Examiner has not obtained any affidavit or declaration from the Internet Archive Wayback Machine supporting the publication date of  the FFHD reference. Nor has any other corroborating evidence been supplied by the Examiner despite repeated challenges  by the Applicant.

The Board in Hicks was not persuaded by this argument either. After noting that a PTO proceeding is not bound by the stricter rules of evidence of a judicial proceeding, the Board concluded that "without more, we decline to agree with Appellants that reliance by the Examiner on FFHD was improper."

As noted above, the Board generally allows the use of the Wayback Machine to show prior art status,
as long as the Examiner identifies the page and retrieval date in the proper manner. In a future post, I'll discuss a few cases where proper identification was at issue.

Board explains that when functional language is coupled with program structure, prior art structure be capable of performing the function without further programming

Sometimes when an Examiner sees a "controller" claimed in combination with functional language, he asserts that a controller in the reference reads on the claim language even though it doesn't perform the function. The Examiner's reasoning is that any controller is "capable of" performing the claimed function, and apparatus claims must distinguish on structure not function.

Last year I blogged here about a number of Board decisions that reversed an Examiner for using this reasoning. And I recently ran across another one of these reversals, in Ex parte Stein. Stein involved claims to an "immunoassay analyzer" which recited "a computer controller which [functional limitations]". I think this language in the Board's decision discussing the relevant case law makes a good template for arguing against such rejections.

     Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus as disclosed must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the controller must possess the necessary structure, hardware or software, for example, the programming, to function as claimed.
     The Examiner’s analysis appears to be based upon a finding that Hanawa’s controller would have been capable of performing the claimed functions upon further modification, such as the installation of software (Ans. 17, 18). While it might be possible to install software and/or hardware that would allow Hanawa’s controller to perform the functions of controlling movement, tracking location and determining the path for each of a plurality of test vessels as required in claim 1 and 13, the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc. , 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller,” see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the case here.

Note that the Board distinguishes In re Schreiber, which was purely mechanical, and which seems to be a favorite among Examiners. The Board relies instead upon more recent cases that involve electronics.

Example of a swear-behind (1.131) declaration executed by an assignee

Takeaway: A §1.131 declaration used to swear behind a reference must be signed by all the inventors, unless "it is not possible to produce the declaration of the inventor." (MPEP 715.04(I)(D).) In such cases, "an assignee or other party of interest" can sign. The MPEP doesn't give much additional guidance on how a swear-behind declaration executed by the assignee is any different than one executed by an inventor, but an example of an assignee swear-behind can be found in Reexam 90/009,435 (available on Public PAIR).

Details:

Appl. 90/009,435
Volterra Ex parte Reexamination
Filing Date: April 6, 2009
(File history available on Public PAIR.)

The Patentee in an ex-parte reexam submitted a declaration under §1.131 to swear behind a reference. However, because one of the two inventors was deceased, the Applicant accompanied the §1.131 Declaration with a Petition under §1.183 requesting waiver of the signature of the unavailable inventor. (See MPEP 715.04(I)). The §1.131 signed by the remaining inventor included a statement that his co-inventor was deceased. The §1.183 Petition explained those facts, then stated:

Thus, for at least these reasons, the Patent Owner submits that this is an extraordinary situation, in which justice requires suspension or waiver of any requirement that all inventors sign the declaration. The Patent Owner requests that a suspension of the rules be granted under 37 C.F.R. § 1.183 and that the declaration under 37 C.F.R. §1.131 be accepted with the signature of the sole surviving inventor, Andrew J. Burstein.

The Petitions Office denied the Petition because an "alternative avenue that complies with the rules is available to obtain the requested relief." The Petition Decision explained that §1.131 specifically allows the Patent Owner to sign the declaration during a reexam. The explanation in the Decision also referred to MPEP 715.04(I)(D), which indicated that "an assignee, or other party in interest" can sign the declaration "when it is not possible to produce the declaration of the inventor."

After the Petition was Denied, the Applicant then resubmitted the §1.131 declaration that was signed by the surviving inventor, and submitted a new §1.131 declaration that was executed by the assignee. The assignee declaration read as follows:

Declaration of Prior Invention by Volterra Semiconductor  under 37 C.F.R. §1.131

I, DAVID OH, hereby declare:
1. I am the General Counsel and Vice President of Legal Affairs of Volterra Semiconductor Corporation, the assignee of the entire right, title, and interest in each of U.S. Patents No. 6,278,264, ("Flip-Chip Switching Regulator") and No. 6,462,522 ("Transistor Pattern for Voltage Regulator"), henceforth "the Burstein Patents." I am empowered to act on behalf of Volterra Semiconductor Corporation.
2. Andrew J. Burstein and Charles Nickel are co-inventors of the Burstein Patents.
3. Charles Nickel is deceased. Because it is not possible to obtain or produce a declaration by Charles Nickel, and because the assignee may make such a declaration in a reexamination proceeding even if the inventors are available, I make this declaration on behalf of Volterra Semiconductor Corporation under 37 C.F.R. §1.131(a) and MPEP 715.04(I)(D).
4. On information and belief, Andrew J. Burstein and Charles Nickel conceived of the inventions described in the Burstein Patents in the United States, and reduced them to practice, prior to February l, 2000, as described in Andrew Burstein's declaration entitled, "REPLY DECLARATION OF ANDREW BURSTEIN IN SUPPORT OF VOLTERRA SEMICONDUCTOR CORPORATION'S MOTION FOR ENTRY OF PRELIMINARY INJUNCTION," ("the reply declaration") dated September 25, 2009, the entirety of which is incorporated into the present declaration. The reply declaration and its accompanying Exhibits A-P were filed in each of the above-referenced reexamination proceedings in conjunction with the DECLARATION OF PRIOR INVENTION OF ANDREW J. BURSTEIN UNDER 37 C.F.R. §1.131 ("the Burstein Rule 131 declaration") dated February 22, 2010.
5. A copy of the Burstein Rule 131 declaration and the reply declaration (with supporting Exhibits A-P) is attached and forms part of the present declaration, with all statements therein declared again in the present declaration.
[Final section acknowledging penalties for willful false statements, referring to 18 U.S.C. §1001.]

The Examiner found the §1.131 declaration to be sufficient to remove the reference.

My two cents:  In the Volterra case, the assignee declaration merely stated that the inventor was dead. The assignee declaration did not include documentary evidence (a death certificate?) although the declaration of the surviving co-inventor did include a corroborating statement.

Note that this lack of documentary evidence is a special circumstance peculiar to reexam. The §1.131 rule itself specifically allows "the owner of the patent under reexamination" to sign the declaration. Notably, the rule also distinguishes between the patent owner and other types of non-inventors allowed to sign: "party qualified under §§ 1.42 [dead inventor] , 1.43 [legally incapacitated inventor], or 1.47 [missing or uncooperative inventor]." 

So outside of reexam, a swear-behind executed by the assignee is submitted under the dead/legally incapacitated provision, or the missing/uncooperative provision. Which means you definitely need to do more than state "inventor can't be found." You need to explain why it's not possible for the inventor to sign, and submit documentary evidence supporting this. MPEP 715.04(I)(D) explains that the evidence is like that you'd submit under the missing/uncooperative provision of § 1.47.

 Proof that the non-signing inventor is unavailable or cannot be found similar to the proof required for a petition under 37 CFR 1.47 must be submitted with the petition under 37 CFR 1.183 (see MPEP § 409.03(d)). Petitions under 37 CFR 1.183 are decided by the Office of Petitions (see MPEP § 1002.02(b)).

As far as the contents of the assignee swear-behind declaration itself, I would look to this Voltera reexam as an example. The sections that differ from an inventor declaration are the description of the signer's position/role at the assignee, and the specific "empowered to act" statement (the first paragraph). And though it may seem a little strange for the signer (here, the General Counsel) to attest to actions of the inventor in the fourth paragraph, that's what a swear-behind is – attestation that the inventors conceived/reduced to practice. I note that in this particular example, the statement about inventor actions is made "on information and belief" and specifically refers to documentary evidence.

Finally, the Petition Decision also noted that "authority to take action by the assignee Volterra has already been established with the filing of a statement under 37 CFR 3.73(b)." In the Volterra case, this Right of Assignee statement was filed with the request for reexam. It's not clear whether you should file such a statement when submitting an assignee swear-behind during regular prosecution. I suppose it wouldn't hurt.

Board affirms anticipation of "selectively deformable projection" but not because plastic is inherently deformable

Takeaway: In an application directed to a fuel injector, the Examiner asserted that the reference disclosed a "selectively deformable projection." In illustrating the projection, the reference drawing used the cross-hatching pattern for synthetic resin or plastic, which the Examiner asserted was "known to be selectively deformable." The Applicant argued that because the MPEP did not require particular cross-hatching patterns to be used, the projection in the reference was not necessarily made of plastic. Furthermore, the Examiner had not provided evidence that plastic was selectively deformable. The Board affirmed the rejection, noting that the reference taught a projection that passes through an aperture when the electrical terminals are mated with a power source. The Board reasoned that such a projection was "selectively deformable." (Ex parte Reiter, PTAB 2013.)

Details:

Ex parte Reiter
Appeal 2010008974; Appl. No. 11/662,621; Tech. Center 3700
Decided:  September 11, 2012

The application was directed to a fuel injector. A representative claim on appeal read:

     18. A fuel injector, comprising:
     a valve housing;
     a solenoid coil;
     a selectively deformable projection;
     a restoring spring;
     an armature, wherein the armature is acted upon by the restoring spring, and wherein the armature cooperates with the solenoid coil;
     a valve needle, wherein valve needle and the armature together form an axially displaceable valve part;
     a sealing seat formed by a valve-closure member and a valve-seat body, wherein the valve closure member is provided on the valve needle; and
     a disk made of an elastomeric material affixed between the solenoid coil and the valve housing.
(Emphasis added.)

In a first Office Action, the Examiner rejected originally filed claim 18 as obvious over a combination of two references. The Applicant amended to include a "selectively deformable projection."

The Examiner maintained the rejection in a Final Office Action, relying on reference number 96 in FIG. 2 of the primary reference, Casey.

The Examiner then explained that while the text of Casey referred to 96 as  "mating aperture" rather than as a projection, "the numeral and line call-out are pointing out the projecting part of bobbin 88."

The Applicant argued in an After Final Response that the reference did not disclose that the projecting part of bobbin 88 was "selectively deformable."

The Examiner provided additional information in an Advisory Action, noting the cross-hatching pattern shown in Casey's FIG. 2 and indicating that this pattern is for "a synthetic resin or plastic." The Advisory Action same cross-hatching was used for number 100, described in Casey as an "electrical connector housing" made of "a structural plastic such as glass filled nylon."  The Action thus concluded that "such plastic is known to be selectively deformable."

The Applicant appealed, and maintained that Casey did not teach a "selectively deformable projection." The Applicant characterized Examiner's statement about inherent properties of structural plastic as "speculation and conjecture" since "there is no evidence in the present record that a structural plastic such as glass filled nylon is or may be selectively deformable." Turning to the cross-hatching in Casey's FIG. 2, the Applicant noted that the MPEP did not actually require particular cross-hatching patterns, but only indicated that Applicants should use these patterns, and also indicated that "use and clarity [of patterns] must be decided on a case-by-case basis." Thus, Casey's cross-hatching was not sufficient evidence that the projection was necessarily made of a structural plastic.

The Examiner's Answer elaborated once again on the cross-hatching issue, noting that the illustration of projection 27 in Applicant's FIG. 3 used the very same cross-hatching pattern as used in Casey, which in turn was the pattern for synthetic resin or plastic shown in MPEP 608.02. The Examiner also asserted that "synthetic resin and/or plastic are know for their inherently present deformation properties." Finally, the Answer included a statement that seemed to involve claim construction: "The Examiner would like to point out that any physical object is inherently selectively deformable to a degree."

The Applicant filed a Reply Brief and argued the above statements from the Answer were merely "conclusory allegations of inherency," where the law of inherency required "a basis in technical fact and/or technical reasoning."

The Board affirmed the rejection. The Board first interpreted the term at issue. Using dictionary definitions of the two adjectives, the Board found that “ 'a selectively deformable projection' is a projection that can have its form spoiled due to a highly specific activity or effect." (Emphasis in original.) Applying this interpretation to Casey's teachings, the Board found as follows:

The portion of bobbin 88 which forms aperture 96 juts out from the main body of bobbin 88 as shown in Figure 2, thus constituting a projection as required by claim 18. This projection can have its form spoiled due to a highly specific activity or effect such as when the jutting portion of bobbin 88 passes with electrical terminals 94 through apertures 96 provided in the radial flange 80 or when the terminals 94 are mated with a power source for the solenoid coil 86. See Casey, col. 4. Ll. 51-55. Accordingly, Casey describes “a selectively deformable projection” as broadly claimed.

The Board also commented on the cross-hatching issue as follows:

Appellant contends that the cross hatching symbol used for aperture 96 is not necessarily synthetic resin or plastic because such symbols are not required by MPEP § 608.02. This argument concedes that Casey’s aperture 96 is indicated to be synthetic resin or plastic, and the fact that such marking is not mandated does not demonstrate that this marking is in error. Further, consistent with the indication that it is synthetic rubber or plastic, aperture 96 is formed by pair of bosses 98 that circumscribe and electrically isolate electrical terminals 94. Casey, col. 4, ll. 55-58; fig. 7.

My two cents: The Examiner relied solely on cross-hatching and inherent properties of plastic. The Board, however, relied on teachings in Casey about the projection passing through the aperture. So I say the Board made a new ground of rejection without designating it as such.

Did the Board read too much into Casey? Maybe the protrusion deformed as it passed through the aperture. But maybe the aperture was sized just slightly larger than the protrusion, so that deformation of the protrusion wasn't needed. Absent a teaching that

The original rejection relied on aperture 96 as the "projection." The Examiner later clarified by essentially saying "Casey may say 96 is an aperture, but it clearly points to a projection." And though I didn't mention this in my discussion of the prosecution history, the Applicant and the Examiner actually went back and forth on this point several more times. This is silly because Casey actually names the relied-upon structure "boss 98."

 The electrical terminals 94 are electrically insulated from the stator's radial flange by a pair of bosses 98 circumscribing the electrical terminals. These bosses 98 are formed integral with the spool 92 and extend through the apertures 96 of the radial flange. Alternatively, the solenoid coil 86 may be wound on a separate spool as is commonly done in the art. 

Why didn't the Examiner modify his rejection to rely on this more specific teaching instead of confusingly referring to aperture 96? And when he didn't, why did the Applicant keep harping on an irrelevant point? I think sometimes Applicants just like pointing out Examiner errors, even ones that don't directly advance their case.

One final nitpick. The Board said the Applicant conceded that Casey indicated the aperture/projection was plastic. I disagree: all the Applicant conceded was that Casey used cross-hatching. The Applicant in fact argued (several times) that a POSITA wouldn't necessarily understand cross-hatching to mean plastic.

Board finds indefiniteness when Applicant argument inconsistent with language of claim

Takeaway: An Applicant appealed the prior art rejection of a claim to noise reduction electronics. The Applicant argued that the reference didn't teach "wherein the actuator is ... directly mounted on a surface of the component influenced by the vibrations." The actuator was positively recited in the body of the claim, but the component was not. The Board entered a new indefiniteness rejection. The Board found that the Applicant's argument implied that the component was part of the claimed combination, while the structure of the claim itself implied that the component was not. Thus, the claim was ambiguous and indefinite under Ex parte Miyazaki.(Ex parte Bendel, PTAB 2013.)

Details:

Ex parte Bendel
Appeal 2012-001251; Appl. No. 11/901,804; Tech. Center 3600
Decided: Nov. 21, 2013

The application was directed to noise reduction electronics. A representative claim on appeal read:

     1. A device for actively influencing vibrations in a component, comprising:
     a sensor for detecting the vibrations;
     an electrically actuatable piezoelectric actuator for acting on the component; and
     a regulation and control unit in which actuating signals are generated from sensor signals of the sensor in order to adjust the actuator;
     wherein the actuator is one of (a) directly mounted on a surface of the component influenced by the vibrations, and (b) enclosed inside a wall of the component influenced by the vibrations.
(Amendments shown.)

The Applicant amended as shown above in response to an anticipation rejection in the first Office Action. The Examiner maintained the anticipation rejection in the next Office Action, and the Applicant appealed.

In the Appeal Brief, the Applicant argued that the reference did not teach either of the alternative limitations describing the location of the actuator. According to the Applicant:

[T]he cited sections of Fischer merely describe actuators 4 enclosed within a vibration damper module 1. Thus, the actuators 4 are merely situated within a device for actively influencing vibrations in a component. Nowhere does Fischer disclose that its actuators 4 are directly mounted on a surface of a component influenced by vibrations, as opposed to the device for actively influencing vibrations, as provided for in the context of claim 1.

The Examiner provided further explanation of his position in the Answer, as follows:

The Applicant takes an overly narrow construction of (1) what constitutes the "component" and (2) what it means to be "influenced" by vibrations.  First, claim 1 does not require the "component" to be entirely separate from the device ... the claim in no way precludes the "component" from being some part of the "device" itself. Second, the mere fact that the vibration damper module 1 is producing vibrations does not preclude some portion of it from being "influenced" by these vibrations as well. All that is required to meet the limitation of claim 1 is that the component changes in some way (i.e., is "influenced") due to the vibrations of the device.  Given the broadest possible reasonable interpretation of the claim, the housing 5 of the vibration damper module 1 is "influenced by vibrations" because it goes from a state of rest to a state of "tension" in producing the counter vibrations. 

The Applicant filed a Reply Brief arguing that the Examiner's interpretation of the claim language at issue was unreasonable:

[A]ny reading of the present application makes plain that "a component influenced by vibrations" does not form a part of "a device for actively influencing vibrations."  Moreover, the Examiner's overly broad interpretation of the presently claimed subject matter leads to the nonsensical result of a device that produces influencing vibrations that influence itself, and simultaneously produces damping vibrations to dampen the influencing vibrations previously produced.  ... it is completely nonsensical to produce influencing vibrations only to then try to damp those same vibrations.  ... one of ordinary skill in the art would know that in order to prevent vibrations in a device for actively influencing vibrations, one may simply not produce any influencing vibrations from the outset, instead of producing influencing vibrations only to then have to simultaneously produce damping vibrations.

The Board didn't reach the merits of the anticipation rejection and instead entered a new indefiniteness rejection under Ex parte Miyazaki ("more than one plausible interpretation"). The Board first noted that the preamble did not recite a device in combination with a component, but rather recited the component being influenced as the target of the intended use of the device. However, in the Appeal Brief the Applicant distinguished the reference with arguments about the component. The Board found that this contradiction between the preamble and the position taken by the Applicant made the claim ambiguous:

   Since Appellant appears to be arguing that the wherein clause states a  condition that is material to patentability, claim 1 appears to be ambiguous. In other words, it is not clear whether Appellant’s claim 1 recites a device per se, with intended use language as to the component, or a combination of a device and a component wherein the actuator is one of directly mounted on the surface of the component or enclosed inside a wall of the component.
   As claim 1 is a claim under examination that is susceptible of more than one plausible interpretation, claim 1 is indefinite because the scope of the claim differs significantly depending upon which of the plausible interpretations one adopts. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211- 12 (BPAI 2008) (precedential) ) (“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.”).

My two cents: Arguing that a claim element distinguishes over the reference make a claim ambiguous? Really? Nah, I don't buy it.

The Board's reasoning goes like this:
A) claim term recited in preamble but not in body means term gets no patentable weight
B) Applicant argued that same term distinguishes over the reference, i.e., gets patentable weight
C) A and B are contradictory, thus claim is ambiguous.

The way I look at it, A is a presumption that the Applicant attempted to rebut with B. Looking at the claim alone, maybe the term gets no patentable weight. But Applicant argued the reference didn't teach the term at issue, thus implying the term gets patentable weight. Maybe the Applicant's rebuttal is persuasive, and maybe it isn't. But it seems ridiculous to use this argument to find the claim contradictory and thus indefinite. If anything, the Applicant argument makes the claim more definite.