Federal Circuit says different claim elements are interpreted as distinct components

A new post "Two Separate Things Are Not One Thing" on the American IPA blog discusses annoying rejections for a "claim to A+B, where A and B are separate items, over a reference that only discloses A, the rationale being that 'A is both A and B.' "

American IPA points out that this summer's Becton opinion from the Federal Circuit includes a great quote to fight this sort of rejection:

Where a claim lists elements separately, "the clear implication of the claim language" is that those elements are "distinct components" of the patented invention.
(Becton Dickinson and Co. v. Tyco Healthcare Group, slip op. page 10, quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004 )).

I'll be watching to see if the BPAI starts using Becton. I blogged earlier (here) about several BPAI decisions that relied on the same rationale to reverse anticipation rejections. In those decisions, the BPAI cited to Lantech, Inc. v. Keip Machine Co (1994) and In re Robertson (1999) as Federal Circuit precedent. Actually, it seems that Gaus v. Conair, quoted in Becton, might be the clearest statement of the proposition.

Case law you can use: claim terms are interpreted in the context of the claim as a whole

Takeaway: The next time the Examiner picks your claim terms apart one by one rather than considering how the limitations are linked together by the claim language, consider citing these two cases used by the BPAI in such a situation:

Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) ("proper claim construction ... demands interpretation of the entire claim in context, not a single element in isolation."); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) ("While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered....").

Details: Here are quotes from various BPAI decisions where the Board has applied Hockerson-Halberstadt and/or ACTV, Inc. to require the Examiner to consider the context of the claim as a whole.

Ex parte Abajian:

   We conclude that the Examiner’s overly broad interpretation is unreasonable because it ignores specific positively-recited claim limitations. We note that the disputed step of “enhancing” is expressly defined by the claim language itself to require “adding at least a portion of the contents of the metadata record to the extracted metadata.” We conclude that a broad but reasonable interpretation of the claimed “enhancing” step involves more than merely adding two nondescript metadata elements together.
   The Examiner appears to be focusing on the “enhancing” element in isolation and is ignoring the context of the claim as a whole. However, claim terms are not to be interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co.
(internal citations omitted.)

Ex parte Moore:

   The Examiner found that “[w]hether the delta is between available media stream output times among a plurality of devices or a single device is  not clear form [sic] the claim as recited.” We disagree with the Examiner.
   Based upon our review of the record, we conclude that the Examiner’s broad construction is inconsistent with the usage of the claim term “delta” as that term is recited throughout the claim. We note that claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co. ...
   [C]laim 1 specifically recites supra that the “delta between available media stream output times” is received from each output device. Thus, we find that because the claimed “delta” is received from each output device, the delta must necessarily represent the delta between available output times in a single device. ...
    [A]t most, Shaw discloses a delta between an output time and a master clock. Thus, we find that Shaw fails to disclose receiving from each output device a delta between available output times.
(internal citations omitted.)

Ex parte Saxena:

   In the Answer, the Examiner explains that “the transform criteria [in Periyannan] is whether the requested object is cacheable or non-cacheable based on the URL and header information of the request.”... However, if we adopt the Examiner’s aforementioned reading of “transform criteria” (as applied to Periyannan), we find the Examiner’s construction to be inconsistent with the usage of “transform” as that term is applied in the remainder of the claim. Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co. ...
   Therefore, we find that Periyannan’s URLs are not compared with transform criteria where (to be consistent with the remainder of the claim) the transform criteria identifies a specific transform that defines an action to perform on the first uniform resource identifier portion where a second request is generated based on the specific transform.
(internal citations omitted.)

Ex parte Templer:

   We agree with the Examiner that an ordinary and customary meaning of the term “code” is “a system of signals used in communication.” ... However, in claim 1, we note that the term “operator” modifies the term “code.” ... [W]e find that an “operator code” is narrower in that it implies a code that corresponds to an operator. Similarly, in claim 12, because the code associated with the operator is received from the operator, a person of ordinary skill in the art would infer that the code corresponds to the operator. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (the claims themselves provide substantial guidance as to the meaning of particular claim terms); see also ACTV, Inc. v. Walt Disney Co. ... As such, we find that a code associated with the device and the operator, as generally required by claims 1 and 12, implies a code that corresponds to the operator.
(internal citations omitted.)

Ex parte Bergert:

   The Examiner asserts that Henneuse discloses the number of openings because by inviting people, the event inherently has one or more openings. The Examiner may be correct if the claim merely recited at least one opening. However, the claims recite that the reservation information includes the number of openings, which requires an actual number, especially in view of the later recitations in the claims that the number of individuals is greater than the number of available openings. See ACTV, Inc., 346 F.3d at 1088. This interpretation is confirmed by the Specification, where the number of openings is used in the context of a limited number of slots in a golf reservation. See Vitronics Corp., 90 F.3d at 1582.  Henneuse does not disclose that an actual number of openings is provided on the reply page.
(internal citations omitted.)

Case law you can use: functional equivalent not enough for anticipation

Takeaway: When structure is claimed, a reference used for anticipation must disclose the claimed structure, not merely a structure that performs the same function. See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965).

I first came across the "no functional equivalents" doctrine in the Appellant's brief for a mechanical case, Ex parte Konstant. One of the claim elements at issue in Konstant was a "flange ... with the entire upper width that defines an upper support for at least one cross bar." Citing to a dictionary, the Examiner asserted that a flange was "a projection used for strength or attachment," then asserted that "the 'steps' or 'lips' of [the reference] perform this function." The Appellant cited Suzuki v. Richardson for the proposition "for anticipation, 'almost' is not enough; there is no such thing as 'anticipation by equivalents'."

I thought it was an interesting argument, though the Board in Konstant didn't mention the doctrine and instead reversed on other grounds. (Namely, it's improper for Examiner to rely on the same structure to disclose two separate claimed elements; see my Ex parte Konstant post here).

I was excited to see the BPAI using what seems to be the same "no functional equivalents" doctrine in Ex parte Kershaw. I found out about this decision on the Florida Patent Lawyer blog. You should read Mike Terry's post (here) for the details, but here's my take on it. The Appellant claimed a memory management unit, and the Board found that the Examiner's reliance on software components that perform memory management was misplaced since the claimed unit was a structure (i.e., hardware):

[T]he Examiner appears to be relying on certain memory management function performed by various software components in Ledebohm (e.g., Driver Program 136, and/or Resource Manager 138). (See FF2.) We agree that Ledebohm is directed to performing management functions. However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) (“the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant.”)
(Ex parte Kershaw, p. 8.)

While most of the applications I work on involve a lot of function rather than structure, when I do have a structural element I'm definitely going to watch out for an opportunity to apply In re Ruskin.

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."

Case law you can use: Examiner can't pick and choose unrelated embodiments in a §102

What do you do when an Examiner gives you a §102 rejection that combines completely unrelated teachings in a single reference?

With a §103, at least you can argue why these two pieces are unrelated and thus would not be combined. OK, you're unlikely to convince the Examiner with this argument — but at least it's legally relevant. But "wouldn't make sense to combine" isn't legally relevant to a §102...is it?

Not exactly. But there is another weapon you can use:

The [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.
In re Arkley, 455 F.2d 586, 587 (CCPA 1972).

Although In re Arkley was a chemical compound case, the Board does ocassionally use it to overturn anticipation rejections in non-chemical cases.

On example is Ex parte Ludwig (Appl. No. 09/812,400). The anticipatory reference taught two embodiments of a tone generator: FIG. 2 was a hardware implementation; FIG. 4 was a software implementation. The Examiner read one claim limitation on a component in FIG. 2 and another claim limitation on a component in FIG. 4. The Board reversed, holding that "the Examiner’s anticipation rejection cannot be based on merely picking and choosing multiple, distinct teachings from Suzuki that could somehow be combined to arrive at the claimed invention. See [Net MoneyIn, 545 F.3d ] at 1371. See also In re Arkley, 455 F.2d at 587. Rather, to anticipate, Suzuki must disclose every recited element arranged as in the claim—which it does not." (Decision, pp. 10-11.)

Another example is Ex parte Sato (Appl. No. 10/791,829). The claims were directed to an electro-deionization apparatus which introduced deionized water from desalting compartments into a specific location in concentrating compartments or allowed concentrated water to flow out of a specific location in the concentrating compartments. The Board overturned the rejection, citing In re Arkley and holding that the "[t]he Examiner has combined the Liang ‘037 Figures 1 and 13 without establishing a direct relation of the relied-upon features." (Decision, p. 5.)

Here's another example: Ex parte Omshehe (Appl. No. 09/954,509). The claims were directed to verifying software licenses when executing software. The anticipatory reference taught two distinct licensing mechanisms. The Examiner relied on one of these mechanisms to teach some claim limitations, then on the other mechanism to teach the remainder of the limitations. The Board reversed the rejection, holding that "such a mix[ing] and match[ing] [of] elements from Redding's two distinct authorization modes is inappropriate for a rejection based on anticipation. Therefore, the Examiner fails to show every element of the claimed invention arranged as in the claims." (Decision, p. 6.) Interestingly, the Board did not cite any caselaw for the proposition that mixing and matching is inappropriate. But clearly In re Arkley is appropriate.

As a final example, look at Ex parte Strongin (Appl. No. 09/825,905). The technology involved (computer processor architecture) is more complicated than I want to get into. But the takeaway is that the Board reversed, citing In re Arkley and stating that "The Examiner is apparently of the opinion that the claimed feature of (1) controlling access to selected information using a first table is taught by Figure 45 of Nozue, and (2) controlling access to selected information using a second table is taught by Figure 24A of Nozue. We find that Figures 24A and 45 depict different embodiments of the Nozue reference." (Decision, pp. 6-7.)