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.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.
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.
What is sad is that there are still APJs that don't "get" this case law.
ReplyDeleteI just ran across a Decision dated within the last couple of days that still gets it wrong.
Delete" just ran across a Decision dated within the last couple of days that still gets it wrong"
DeleteYou mean they did it right?????? For a change? lol please post us up this roast!
"however, the prior art apparatus as disclosed must be capable of performing the claimed function. "
ReplyDeleteNot if you trick the applicant into stating for the record that they only meant to convey structure and specifically not function.
he he he.
These people can chase their tails around all they like. I will hunt them down and pin them to a position eventually and rend them limb from limb. It's either structure or function. Or both. they can take their pick of positions but I'm going to win either way. There are board decisions dealing with either or of the positions, but pinning them to one or the other on the record leaves them open to different methods of attack on the other.
"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)."
ReplyDeleteIt probably wasn't based on that, but the board probably read that into the examiner's position because they're not capable of understanding the actual position taken.
"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,”"
ReplyDeleteMayhap and mayhap not. But in either event, you're going to need to draw out that structure for me.
"The Examiner appears to interpret these limitations as encompassing computers that could be programmed to perform the recited functions."
ReplyDeleteThe crucial mistake made by the examiner. Instead, he should make the applicant take that position. And then, should the applicant take such a position, simply ask just what structure is implied by a computer that has a structure which has been programmed, in the past (note the implicit process limitation due to the having occured in the past thus now making the claim product by process), to perform such a function.
The examiner should not have taken that position from the outset, but rather taken the position that the claim was purely structural. Thereby avodiing the functional nonsense all together until the applicant wishes to bring it in. At which point, note that they're attempting to distinguish their claim in terms of function not solely structure any longer and decline to interpret an apparatus claim thusly in the first place. Finally, put a caveat that even if the claim should be interpreted to involve a structure that must be able to perform a function without further modification, the proposed structure (make the applicant propose the "programmed to" implicit language) is distinguished in terms of a method step having been performed in the past, programmed, i.e. programming that has already happened to the structure. And then note that it is not clear just what structure would necessarily result from such programming. From there, take your pick, anticipation based on the structure before the office with the burden now shifted to the applicant to show his structure is different, or indefinitness, WD etc. etc.