How does the Patent Office Get out of a Fix?

Scott Daniels | May 25, 2012

The PTO Board of Appeals found itself in a difficult situation yesterday in the inter partes reexamination of Google v. Function Media (95/001,061).  The reexamination examiner had adopted a number of prior art rejections proposed by Requester Google, and the Patentee Function Media had appealed to the Board.  Function Media’s rejected claims were the original, unamended claims.  Accordingly, those claims could be rejected only if they were anticipated or made obvious by “patents or other printed publications” – other rejections, such as rejections under § 112, were prohibited. 

The problem was that the claims recited a series of means-plus-function limitations that lacked corresponding structure in the specification.  On the one hand, the Board was forbidden by statute from rejecting the claims under § 112, ¶ 6, and on the other hand, the Board could not review the examiner’s prior art rejections because it could not construe those limitations in the manner required by § 112, ¶ 6.

The patent claimed an advertising method that allows sellers to create presentations.  The method comprised five steps, four of which included means-plus-function limitations, for instance, the step of, “providing means for applying corresponding guidelines of the media venues.”  The Board determined that “the identified portions [of the specification] do little more than recite the functions of the means in different words.”  The cited diagrams from the specification were “little more than high level flow charts, which fail [to disclose] the algorithms of the recited means….”  The specification therefore failed to provide “necessary corresponding structure” and the claims were “fatally ambiguous.” 

But what to do?  The Board acknowledged that “it would be pointless to enter a new ground of rejection on the basis of the indefiniteness because such rejections are beyond the scope of reexamination for issued claims, and as such, the Examiner would be barred by rule from enforcing the rejection.” 

Nonetheless, the Board presented a new ground of rejection, concluding that the “remedy for this sort of ambiguity is not to read limitations in from the Specification…or to read the claim broadly, as the Examiner attempts, but rather to reject the claim as indefinite.”  It decided “to reverse the speculative prior art rejections of record without prejudice to [their] reinstitution if the patent owner files an amendment or reissue application to cure the indefiniteness.” 

What if the patentee refuses to amend its claims and simply asks for confirmation of the validity of its original claims?  What will the examiner do?  Confirm invalid claims or contravene the Patent Statute?  One path that the examiner does not have is the one chosen yesterday by the Board.

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