In Re Avid Identification Systems, Inc. , 504 F. App'x 885 ( 2013 )

NOTE: This disposition is nonprecedential
United States Court of Appeals
for the Federal Circuit
__________________________
IN RE AVID IDENTIFICATION SYSTEMS, INC.
__________________________
2012-1092
(Reexamination No. 90/008,702)
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
____________________________
Decided: January 8, 2013
____________________________
DAVID B. ABEL, DLA Piper LLP, of Los Angeles, Cali-
fornia, argued for appellant.
BRIAN T. RACILLA, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were RAYMOND
T. CHEN, Solicitor, and THOMAS W. KRAUSE, Associate
Solicitor. Of counsel was BENJAMIN D.M. WOOD, Associate
Solicitor.
__________________________
IN RE AVID IDENTIFICATION 2
Before LOURIE, CLEVENGER, and BRYSON,* Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE.
Dissenting opinion filed by Circuit Judge CLEVENGER.
LOURIE, Circuit Judge.
Avid Identification Systems, Inc. (“Avid”) appeals
from the decision of the Board of Patent Appeals and
Interferences (“the Board”) of the United States Patent
and Trademark Office (“PTO”) in an ex parte reexamina-
tion, rejecting claims 1, 3–10, 12, and 16–20 of its U.S.
Patent 5,499,017 (the “’017 patent”) as anticipated and
obvious over three references. See Ex Parte Avid Identifi-
cation Sys., Inc., No. 2011-000474 (B.P.A.I. Mar. 23, 2011)
(“Board Opinion”), reh’g denied, No. 2011-000474
(B.P.A.I. June 14, 2011) (“Rehearing Opinion”). Because
the Board did not err in rejecting the claims as antici-
pated and obvious, we affirm.
BACKGROUND
Avid owns the ’017 patent relating “to systems con-
sisting generically of an interrogator-responsor (or
‘reader’) inductively coupled to a transponder (or ‘tag’)
where the reader is associated with the identifying agency
and the tag is associated with the object to be identified.”
’017 patent col. 1 ll. 10–14. Such tags are commonly
known as radio-frequency identification (“RFID”) tags.
The claims of the ’017 patent recite RFID tags that con-
tain both memory that cannot be reprogrammed and
memory that can be reprogrammed. Id. col. 1 ll. 49–68.
They designate some portion of memory as “unalterable,”
as represented in claim 1:
1. An electronic identification tag comprising:
* Judge Bryson assumed senior status on January
7, 2013.
3 IN RE AVID IDENTIFICATION
a means for permanently storing data in an unal-
terable fashion, said data being known as un-
alterable data;
a means for permanently storing data in an alter-
able fashion, said data being known as alter-
able data;
means for detecting an interrogation signal;
means for discriminating between a non-
modulated signal and a modulated interroga-
tion signal; and
a means for communicating said unalterable data
and said alterable data to an electronic identi-
fication reader upon detection of a non-
modulated signal.
Id. col. 11 ll. 20–31. Each claim in this appeal requires a
means for permanently storing data in an unalterable
fashion. Independent claims 1 and 20 and dependent
claim 3 also include a limitation for “discriminating
between a non-modulated signal and a modulated inter-
rogation signal,” e.g., id. col. 11 ll. 27–28, while dependent
claims 4, 8, and 12 include a limitation for delaying
enablement of the tag functions for a predetermined
amount of time. E.g., id. col. 11 ll. 46–48. Independent
claim 17 further provides for a “clock timer and delay
circuitry” to prevent the tag from being read twice if the
tag is held in the vicinity of the reader. Id. col. 10 ll. 27–
42.
Three prior art references are relevant to this appeal:
U.S. Patent 4,937,581 of Baldwin (“Baldwin ’581”), U.S.
Patent 4,075,632 of Baldwin (“Baldwin ’632”), and U.S.
Patent 4,303,904 of Chasek (“Chasek”). Baldwin ’581
discloses an identification system that includes an infor-
mation and identity storage device (an RFID tag) in-
IN RE AVID IDENTIFICATION 4
stalled on a moving object and at least one interrogation
station (an RFID reader). The RFID tag contains a mem-
ory bank that stores both “fixed” and “changing” data in
different portions of the memory. ’581 patent col. 1 ll. 61–
68. The “fixed” information can be safeguarded by a
“protect means” to prevent the erasure or reprogramming
of the write-protected “fixed information” stored on the
RFID tag. Id. col. 3 ll. 32–33. The ’581 patent also con-
tains an example in which the “protect means” is inte-
grated with a light activated switch that, only when
illuminated, permits the “fixed” information to be erased
and reprogrammed. Id. col. 4 ll. 4–8, col. 3, ll. 7–10. The
example also states that the RFID tag can only be repro-
grammed after physically removing it from the moving
object. Id. col. 3 ll. 3–7.
Baldwin ’632 discloses an RFID system that can dis-
criminate between modulated and non-modulated signals.
Modulation is the process whereby a high frequency
periodic waveform (or signal) is varied with information
desired to be transmitted. By modulating the signal and
transmitting the modulated signal, the information can be
retrieved after transmission by the receiving device.
Baldwin ’632 col. 1 l. 64–col. 2 l. 11. Baldwin ’632 also
discloses a tag and reader combination where the tag
receives a non-modulated signal and transmits back a
modulated signal. Id. col. 3 ll. 25–31. Alternatively, the
patent discloses that the reader can send a modulated
signal to provide the tag with command signals and other
information. Id. col. 3 l. 54–col. 4 l. 5.
Chasek teaches an electronic toll-paying system
wherein the RFID tag includes a mechanism that delays
the tag from transmitting its data to an RFID reader for a
set period of time. The tags taught by Chasek include a
latch switch that disables all but a few non-transmission
circuits. Chasek col. 4 ll. 64–68. After the tag has paid
5 IN RE AVID IDENTIFICATION
the toll, the switch disables the tag’s transmission capa-
bilities for a predetermined period of time to prevent the
tag from retransmitting information and thus preventing
double billing at a toll booth when a vehicle is in slow
traffic. Id. col. 5 ll. 59–64.
The PTO granted a third party request for ex parte
reexamination of the ’017 patent on August 8, 2007. The
examiner then rejected claims 1, 3–10, 12–13, and 15–20
as anticipated and obvious in light of the above references
and their various combinations. Specifically, the exam-
iner rejected claims 7, 10, and 19 as anticipated by Bald-
win ’581; claims 1, 3, and 20 as obvious over Baldwin ’581
in view of Baldwin ’632; claim 4 as obvious over Baldwin
’581 in view of Baldwin ’632, further in view of Chasek;
claims 5, 6, 9, 16, and 18 as obvious over Baldwin ’581;
and claims 8, 12, 15, and 17 as obvious over Baldwin ’581
in view of Chasek. Independent claim 13 and dependent
claim 15 were confirmed as patentable after an initial
rejection. Avid appealed the various rejections to the
Board.
The Board agreed with the examiner, in particular,
rejecting Avid’s argument that Baldwin ’581 does not
disclose “unalterable data,” which, as indicated, is a
limitation of all the claims. Board Opinion, at *7. Be-
cause the ’017 patent specification lacked an explicit
definition for “unalterable data,” the Board construed the
term as “data that is not readily changeable” and as such
found that Baldwin ’581 disclosed that limitation. Id.
The Board rejected Avid’s other arguments, finding no
error in the examiner’s rejection of claims 1, 3–10, 12, and
16–20, Id. at *7–18, and denied Avid’s petition for rehear-
ing, Rehearing Opinion, at *10. Avid timely appealed.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
IN RE AVID IDENTIFICATION 6
DISCUSSION
We review the Board’s legal conclusions de novo, In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). We review claim con-
struction de novo. In re Baker Hughes Inc., 215 F.3d
1297, 1301 (Fed. Cir. 2000). During reexamination, “the
PTO must give claims their broadest reasonable construc-
tion consistent with the specification.” In re Suitco Sur-
face, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010).
Anticipation is a question of fact reviewed for substantial
evidence in an appeal from the Board. In re Gleave, 560
F.3d 1331, 1334–35 (Fed. Cir. 2009). Obviousness, on the
other hand, is a question of law, based on underlying
factual findings. Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966); Elsner, 381 F.3d at 1127.
I.
We first address Avid’s argument that Baldwin ’581
does not anticipate claims 7, 10, and 19 under 35 U.S.C.
§ 102, that it does not render obvious claims 5, 6, 9, 16,
and 18 under 35 U.S.C. § 103(a), and that it was not a
proper reference for obviousness rejections for claims 1, 3,
4, 8, 12, 17, and 20 on the ground that the Board’s con-
struction of “unalterable data” was unreasonable and
inaccurate. Avid argues that the Board erred by constru-
ing “a means for permanently storing data in an unalter-
able fashion, said data being known as unalterable data”
as “data that is not readily changeable.” Specifically,
Avid argues that the function of the limitation “means for
permanently storing data in an unalterable fashion” is
7 IN RE AVID IDENTIFICATION
simply “permanently storing data in an unalterable
fashion.” Avid Br. 19.
The Director responds that the Board simply gave the
claims their broadest reasonable interpretation consistent
with the specification. He argues that the ’017 patent
provides no explicit definition of “unalterable data,” but
that the Board correctly looked to the specification to
construe that limitation. The Director points out that the
specification describes unalterable data as “permanent”
but also as “data that never needs to be changed,” ’017
patent, at [57], and data that “usually cannot be repro-
grammed,” Id. col. 1 ll. 49–57. The Director asserts that
the Board was correct in construing “unalterable data” as
“data that is not readily changeable.”
We agree with the Director that, as the Board prop-
erly gave the limitation “unalterable data” its broadest
reasonable interpretation consistent with the specifica-
tion, it did not err in its construction. The specification
itself employs varying terminology in defining unalterable
data. Although the patent describes unalterable data as
“permanent,” it also describes it as “data that never needs
to be changed” and data that “usually cannot be repro-
grammed.” Thus, because there was no consistent, ex-
plicit definition in the specification, and there were varied
uses of the phrase in the patent, the Board under its
broadest reasonable construction practice did not err in
construing “unalterable data” in the ’017 patent claims as
“data that is not readily changeable.”
II.
Avid argues that claims 7, 10, and 19 are not antici-
pated by Baldwin ’581 because it does not disclose a
“means for permanently storing data in an unalterable
fashion.” Aside from Avid’s contention that the Board
erred in construing “unalterable data,” Avid argues that
IN RE AVID IDENTIFICATION 8
Baldwin ’581 only discloses “protected” memory that is
not permanent and unalterable. It argues that because of
this shortcoming, the Board’s determination is not sup-
ported by substantial evidence because all data in the
Baldwin ’581 RFID tag are alterable. Avid points to
examples within the ’017 patent’s specification that
disclose non-reprogrammable memory types, which indi-
cate the range of memory types that it discloses as a
means for storing unalterable data, and argues that
Baldwin’s memory is none of those.
The Director contends that Baldwin ’581 teaches an
RFID tag with a memory that stores both “fixed” data,
i.e., data that cannot be altered, and alterable data. He
argues that the ordinary meaning of the term “fixed” is
“determined, established, set” and “not subject to change
or variation.” The American Heritage College Dictionary
515 (3d. ed. 1997). The Director states that the Board
properly found “no difference between [Baldwin ’581’s]
‘fixed’ data or data protected from erasure and the
claimed ‘unalterable’ data or data that are not readily
changeable since both forms of data are ‘fixed’ and are
therefore not readily changeable.” Board Opinion, at *7.
We have already determined that the Board properly
construed the claim term “unalterable data.” Avid con-
cedes in its brief that Baldwin ’581 discloses an RFID tag
including logic circuit and memory, trigger circuit and a
transmitter. Its only contention that claims 7, 10, and 19
are not anticipated by the reference is that the Board’s
determination that Baldwin ’581 taught unalterable data
was not supported by substantial evidence. When deter-
mining whether Baldwin ’581 taught “unalterable data,”
the Board found that the patent discloses a system “that
can store both fixed and changing information,” Baldwin
’581 col. 1 ll. 62–63, data that “can be protected from
accidental erasure so that portion cannot be changed,” id.9 IN RE AVID IDENTIFICATION
col. 1 ll. 65–67 (emphasis added), “information [that] is
protected from erasure,” id. col. 2 ll. 3–4, and data that
“may be protected from erasure as they contain fixed
information,” id. col. 2 ll. 14–16. It was after pointing to
those statements that the Board found no difference
between Baldwin’s “fixed” data and the ’017 patent’s
“unalterable data.” The Board considered Avid’s argu-
ment that even the “protected” data of Baldwin ’581 is
alterable but determined that the protected data may only
be reprogrammed when the RFID tag is physically re-
moved from the moving object it is installed on. Baldwin
’581 col. 3 ll. 6–7. While the tag is installed, the data are
permanent and unalterable. Board Opinion, at *8. We
thus conclude that the Board’s determination that Bald-
win ’581 anticipates claims 7, 10, and 19 was supported
by substantial evidence.
Because the Board did not err in giving “unalterable
data” its broadest reasonable interpretation and in find-
ing Baldwin ’581’s disclosure to be of a means for perma-
nently storing data in an unalterable fashion, we affirm
the findings of the Board. We thus affirm the Board’s
conclusion that claims 7, 10, and 19 are invalid as antici-
pated by the Baldwin ’581 reference.
The dissent argues that the PTO failed to properly
examine the “means for storing” clause under § 112, ¶ 6
and hence that we should vacate the Board’s decision and
remand for further consideration. We disagree.
As the Director argues, Avid waived that point by fail-
ing to specifically argue that alleged procedural fault.
Avid failed to point out to the Board on appeal or on
rehearing its contention that the procedure for interpret-
ing the “means for storing” clause was not followed. Avid
and the dissent point to the fact that the Board has previ-
ously evaluated § 112, ¶ 6 cases without invoking waiver,
IN RE AVID IDENTIFICATION 10
but the fact that the Board has on occasion overlooked
particular procedural defaults does not mean that it is
compelled to waive those procedural requirements for all
subsequent cases. Any technical shortcomings in the
procedure for evaluating the clause at issue were not
raised and were thus waived. See, e.g., Ex Parte Puneet
Sharma, No. 2009-015156, 2012 WL 2486755, at *6 n.2
(B.P.A.I. June 27, 2012) (noting that “Appellant’s argu-
ments do not rely on the structure disclosed in Appellants’
Specification . . . and equivalents thereof, and such argu-
ments are, therefore, waived”).
Use of the word “means” customarily raises a pre-
sumption that a clause containing that word followed by
the function carried out by that means is subject to the
limitation that the means covered by the claim are limited
to structure recited in the specification for carrying out
that function, plus equivalents. The dissent, and Avid,
argue that without going through the formalities of find-
ing the corresponding structure in the specification, a
proper anticipation and obviousness analysis cannot be
carried out. But Avid did not fully raise this point with
the Board. And, while the presumption that the use of
the word “means” requires a search for structure in the
application at issue, an applicant needs to specifically
raise the point if it is challenging the application of § 112,
¶ 6 by the PTO. See 37 C.F.R. § 41.37(c)(1)(v) (requiring
identification of support in specification and, for means-
plus-function limitations, corresponding structure as
well). An appellant cannot prevail by arguing alleged
technical flaws in the PTO’s procedure when it has itself
failed to comply with its own procedural obligations.
Here, the Board’s rejection of the claims under the
PTO’s “broadest reasonable interpretation” guideline was
sufficient to sustain the Board’s rejection. If Avid wished
to challenge the examiner’s decision, it needed to explic-
11 IN RE AVID IDENTIFICATION
itly articulate its grounds for doing so. Having failed to
do that, it waived such an argument.
Avid advances the same arguments and reasoning to
attack the Board’s determination that claims 5, 6, 9, 16,
and 18 were correctly rejected as obvious over Baldwin
’581. Because Avid’s arguments for anticipation and
obviousness are the same, that the “unalterable data”
term was incorrectly construed and not disclosed in
Baldwin ’581, for the reasons previously set forth we
further conclude that the Board did not err in finding
claims 5, 6, 9, 16, and 18 obvious over Baldwin ’581. We
also conclude that the Board did not err in utilizing
Baldwin ’581 as a reference, in combination with other
references in rejecting claims 1, 3, 4, 8, 12, 17, and 20 as
obvious under 35 U.S.C. § 103.
III.
Avid next argues that the Board erred in rejecting
claims 1, 3, and 20 as obvious over Baldwin ’581 in view of
Baldwin ’632. Avid contends that the Board incorrectly
concluded that Baldwin ’632 disclosed a “means for dis-
criminating between a non-modulated signal and a modu-
lated interrogation signal; and a means for
communicating said unalterable data and said alterable
data to an electronic identification reader upon detection
of a non-modulated signal.” E.g., ’017 patent col. 11 ll.
27–31. Avid also argues that Baldwin ’632 does not
disclose a reflexivity modulator that receives a modulated
interrogation signal as required by the claims.
The Director responds that Baldwin ’632 was cited by
the examiner only to show that use of modulated and non-
modulated interrogation pulses was well-known in the
art. The Director argues that Avid’s arguments mischar-
acterize the examiner’s rejection. J.A. 450. Instead, he
IN RE AVID IDENTIFICATION 12
contends that the examiner utilized Baldwin ’581, not
Baldwin ’632, for the limitations Avid contests.
We agree with the Director that Baldwin ’632 was
only cited to show that modulated and non-modulated
signals were well-known in the art. J.A. 183. Avid makes
arguments concerning the Baldwin ’632 patent’s failure to
disclose specific limitations of the ’017 patent claims, but
the Board clearly stated in its opinion that those elements
were disclosed in Baldwin ’581. Board Opinion, at *12.
The examiner cited Baldwin ’632 only to show that the
use of modulated and non-modulated signals was well-
known in the art. Avid cites nothing to the contrary. We
thus conclude that the Board did not err in finding claims
1, 3, and 20 obvious over Baldwin ’581 in view of Baldwin
’632.
IV.
Avid argues that the Board erred in rejecting claims
4, 8, 12, and 17 as obvious over Baldwin ’581 in view of
Chasek. Avid contends that the Board erred in conclud-
ing that Chasek disclosed the limitations in claims 4, 8,
and 12 of “controller means for delaying enablement of
the tag functions for a predetermined amount of time
following receipt of an interrogation signal . . . .” E.g.,
’017 patent col. 11 ll. 46–48. Avid further contends that
the Board erred with respect to the limitation in claim 17
of “a clock timer and delay circuitry for counting a prede-
terminable number of clock cycles after initial receipt of
[the interrogation signal].” Id. col. 13 ll. 34–42. Avid
argues that its claims call for the delay to occur after
initial receipt of the signal from the RFID reader, but
Chasek only discloses a latching switch whose delay
starts after receipt of the entire transmission.
The Director responds that this new argument was
not raised before the Board and is thus waived. He
13 IN RE AVID IDENTIFICATION
contends that in the initial Board proceedings Avid only
argued that the delay circuitry disclosed in Chasek was
not located in the vehicle transponder/tag as required by
the claims, not that the ’017 patent requires a delay to
occur on initial receipt of the signal. The Director argues
that the Board on rehearing rejected the initial receipt
delay argument as waived and that Avid cannot raise the
waived argument on appeal. Avid does not respond to
this point in its reply brief.
We agree with the Director that Avid first raised this
argument in its petition for rehearing and that the Board
properly refused to consider it in the first instance under
37 C.F.R. 41.52(a)(1). Similarly, “our review of the
Board’s decision is confined to the ‘four corners’ of that
record” because for anything outside that record, “we do
not have the benefit of the Board’s informed judgment on
[that] issue for our review.” In re Watts, 354 F.3d 1362,
1367–68 (Fed. Cir. 2004). Because Avid failed to raise the
timing of the delay argument before the Board, that
argument is waived. Thus, the Board did not err in
refusing to consider the argument based on the timing of
the delay with respect to the obviousness of claims 4, 8,
12, and 17.
IV.
We have considered Avid’s remaining arguments and
conclude that they are without merit. Accordingly, the
Board’s decision is
AFFIRMED
NOTE: This disposition is nonprecedential
United States Court of Appeals
for the Federal Circuit
__________________________
IN RE AVID IDENTIFICATION SYSTEMS, INC.
__________________________
2012-1092
(Reexamination No. 90/008,702)
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
CLEVENGER, Circuit Judge, dissenting.
The majority opinion focuses on the claim limitation
“unalterable data.” While I agree with the majority that
Baldwin ’581 discloses the claimed “unalterable data”, I
do not agree that the Board correctly found that Baldwin
’581 discloses “a means for permanently storing data in
an unalterable fashion,” as required by Claim 1. Because
Baldwin ’581 does not disclose every limitation of Claim 1,
it cannot be an anticipating reference.
The term “a means for permanently storing data” is
undeniably a means-plus-function limitation. The ques-
tion in this case is whether the Patent Office (“PTO”) may
use an unaltered broadest reasonable interpretation
standard in examining means-plus-function claims, or if
these claims must always be interpreted in accordance
with 35 U.S.C. § 112, ¶ 6. The answer is easy.
IN RE AVID IDENTIFICATION 2
35 U.S.C. § 112, our en banc decision In re Donaldson, the
Manual of Patent Examining Procedure (“MPEP”), and
past PTO practice are all in agreement: under § 112, ¶ 6,
“the broadest reasonable interpretation that an examiner
may give means-plus-function language is that statutorily
mandated in paragraph six.” In re Donaldson, 16 F.3d
1189 (Fed. Cir. 1189) (en banc). Here, the PTO did not
analyze the claim under § 112, ¶ 6, and so the only appro-
priate action is to remand the case to the Examiner with
instructions to apply a correct claim construction.
I
First, the statute, 35 U.S.C. § 112, ¶ 6 reads:
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such
claim shall be construed to cover the correspond-
ing structure, material, or acts described in the
specification and equivalents thereof.1
Second, In Donaldson, our en banc court held that
“the plain and unambiguous” meaning of § 112, ¶ 6 re-
quires the PTO to look to the specification and determine
the structures and equivalents disclosed therein.
Donaldson, 16 F.3d at 1193. Accordingly, § 112, ¶ 6 “sets
1 Under the America Invents Act, § 112, ¶ 6 has been
converted via amendment to § 112(f), which reads: “[a]n
element in a claim for a combination may be expressed as
a means or step for performing a specified function with-
out the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.” 35 U.S.C. § 112(f)
(effective September 16, 2012).
3 IN RE AVID IDENTIFICATION
a limit on how broadly the PTO may construe means-plus-
function language under the rubric of “reasonable inter-
pretation.” Donaldson at 1194.
Third, the MPEP confirms that Patent Examiners are
instructed to analyze means-plus-function claims in
accordance with Donaldson. Once the Examiner deter-
mines that the claim is indeed a means-plus-function
claim—an issue not in dispute in this case—the MPEP
instructs the Examiner to perform a two-step claim con-
struction analysis, laid out in Golight Inc. v. Wal-Mart
Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). First,
the Examiner must define the particular function of the
claim limitation. Second, the Examiner must look to the
specification and identify the corresponding structure for
that function. MPEP § 2182, 8th Ed., Rev. 9 (August
2012). With the claim correctly construed, the Examiner
searches the prior art for the disclosed structures and
their equivalents. MPEP § 2183.
Finally, past PTO practice confirms that the PTO ac-
tually performs the correct means-plus-function analysis
in many cases. In fact, the Board of Patent Appeals and
Interferences (“Board”), applies § 112, ¶ 6 to means-plus-
function claims, even if the applicant or examiner have
not raised the issue below.2 This is even the case if the
2 See, e.g., Ex Parte Ben Gill-Ho Lee, No. 2011-6067,
2012 WL 3105536 (B.P.A.I. July 26, 2012) (reversing
obviousness rejection for failure to apply § 112, ¶ 6 and
entering new § 112, ¶ 2 rejection); Ex Parte Eyal Tracht-
man, No. 2009-674, 2009 WL 1270359 (B.P.A.I. May 8,
2009) (reversing Examiner’s prior art rejection for failing
to construe claims in accordance with § 112, ¶ 6); Ex Parte
Hideo Yamanaka, No. 2008-2006, 2008 WL 2233770(B.P.A.I. May 30, 2008) (same); Ex Parte Stefan Wickert,
No. 2010-8152, 2012 WL 3720920 (B.P.A.I. Aug. 26, 2012)
(same); Ex Parte Marcos Nogueira Novaes, No. 2008-4794,
2010 WL 674292 (B.P.A.I. Feb. 23, 2010) (noting that
IN RE AVID IDENTIFICATION 4
applicant does not comply with 37 C.F.R. § 41.37(c)(1)(v),
cited by the Board in our case as a reason to abdicate its
Donaldson duties. Ex Parte Avid Identification Systems,
Inc., No. 2011-474, 2011 WL 2441010 at 13 (B.P.A.I. June
13, 2011) (Torczon, APJ, dissenting from Decision on
Request for Rehearing).3 There is no reason why this case
neither applicant or Examiner applied § 112, ¶ 6 and
adding a § 112, ¶ 2 rejection); Ex Parte Mark Michaud,
No. 2009-14404, 2011 WL 5023925 (B.P.A.I. Oct. 19, 2011)
(reversing Examiner’s prior art rejection for failing to
construe claims in accordance with § 112, ¶ 6 and adding
a new prior art rejection); Ex Parte Mark Thomas John-
son, No. 2010-3268, 2012 WL 4460617 (B.P.A.I. Sept. 24,
2012) (noting that neither applicant or Examiner applied
§ 112, ¶ 6 and adding a § 112, ¶ 2 rejection); Ex Parte
Richard Ian Knox, No. 2009-12769, 2011 WL 5288869(B.P.A.I. Nov. 2, 2011) (same); Ex Parte Yoshihiko Kuroki,
No. 2010-8896, 2012 WL 1375263 (B.P.A.I April 17, 2012)
(noting that Examiner did not interpret claims under
§ 112, ¶ 6 and sustaining rejections under correct § 112, ¶
6 treatment).
3 See, e.g., Ex parte Ari. M. Koivisto, No. 2010-5398,
2012 WL 2573012 (B.P.A.I. June 28, 2012) (directing
Examiner to apply § 112, ¶ 6 to further prosecution of
claims); Ex Parke Geoff M. Lyon, No. 2008-3388, 2008 WL
4371708 (B.P.A.I. Sept. 24, 2008) (remanding to Examiner
to apply § 112, ¶ 6 and noting that the appeal brief failed
to comply with Rule 41.37); Ex Parte Walter H. Whitlock,
No. 2007-630, 2007 WL 2211319 (B.P.A.I. July 30, 2007)
(same); Ex Parte John W. Lee, No. 2009-2134, 2009 WL
2563536 (B.P.A.I. Aug. 17, 2009) (reversing Examiner’s
prior art rejection for failure to construe the claims in
accordance with § 112, ¶ 6, and noting that Appellant’s
failure to comply with Rule 41.37); Ex Parte Siddhartha
Chatterjee, No. 2009-14001, 2011 WL 4872020 (B.P.A.I.
Oct. 7, 2011) (reversing Examiner’s prior art rejection for
failure to construe the claims in accordance with § 112, ¶
6, adding § 112, ¶ 2 rejection, and noting that Appellant’s
failure to comply with Rule 41.37); Ex Parte Thierry
Lamotte, No. 2009-12591, 2012 WL 359598 (B.P.A.I. Jan.
5 IN RE AVID IDENTIFICATION
should be treated differently from past instances where
the PTO has correctly construed means-plus-function
claims.
The PTO is required to act properly under the Admin-
istrative Procedure Act. It cannot behave arbitrarily. But
it does so regularly, much to the detriment of the public,
when confronting § 112, ¶ 6 claims. Sometimes it honors
its Donaldson duties, and sometimes it shirks them,
hiding behind 37 C.F.R. § 41.37(c)(1)(v). Random is the
polite word for the Board’s erratic behavior. This court
should hold the PTO to its obligations, because doing so
benefits the public.
II
Not only does the law require that the PTO apply
§ 112, ¶ 6 to means-plus-function claims, but proper
§ 112, ¶ 6 treatment also involves an indefiniteness
analysis under § 112, ¶ 2. Donaldson at 1195 (“if one
employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant
fails to set forth an adequate disclosure, the applicant has
in effect failed to particularly point out and distinctly
claim the invention as required by the second paragraph
of section 112.”).
In this case, the Examiner allowed claim 13 without
explicitly interpreting the claim under § 112, ¶ 6. Mean-
while, a district court found that there was no support in
the specification for the limitation “means for decoding a
password..." in the same claim. Allflex USA Inc., v. AVID
Identification Systems, Inc., Case No. 5:06-cv-1109, ECF
No. 469 at 15 (C.D.Ca. Feb. 17, 2010) (Claim Construction
31, 2012) (applying § 112, ¶ 6 to claims despite Appel-
lant’s failure to comply with Rule 41.37);
IN RE AVID IDENTIFICATION 6
Order). Had the Examiner properly considered the re-
quirement that the specification disclose structure corre-
sponding to the “means” claimed, this inconsistent result
could have been avoided.
In fact, the PTO recognizes that indefinite means-
plus-function claims are a common problem. The PTO’s
Supplementary Examination Guidelines for Determining
Compliance with 35 U.S.C. § 112, 76 Fed. Reg. 7162,
7167-8 (Feb. 9, 2011), requires that Examiners analyzing
claims under § 112, ¶ 6 ensure that the claims satisfy
§ 112, ¶ 2. “The disclosure must be reviewed from the
point of view of one skilled in the relevant art to deter-
mine whether that person would understand the written
description to disclose the corresponding structure, mate-
rial, or acts. To satisfy the definiteness requirement under
§ 112, ¶ 2, the written description must clearly link or
associate the corresponding structure, material, or acts to
the claimed function.”
III
Because the Examiner and the Board did not properly
interpret the “means for permanently storing data in an
unalterable fashion” limitation, we do not know the
answer to several pertinent questions. We do not know
the identity of the structure in the specification, if any,
that mates with this means limitation. So we do not know
if the patent fails as indefinite. Assuming the patent is
not indefinite, we do not know the identity of the struc-
tural equivalents of the structure disclosed in the specifi-
cation. For purposes of anticipation, we do not know if
Baldwin discloses the structure supporting the means
limitation, although we do know that Judge Torczon in
dissent determined that Baldwin does not disclose a
structural equivalent. And further we do not know
whether the “means for permanently storing” limitation is
7 IN RE AVID IDENTIFICATION
obvious. We would know the answer to these questions
had the PTO not shirked its Donaldson duties. In my
view, the anticipation and obviousness judgments by the
Board are infected, and the infection can only be cured by
proper application of § 112, ¶¶ 6 and 2.
The correct result in this appeal is a remand to the
Board with directions to follow the lead of Judge Torczon
and obey Donaldson. Because the majority does not agree
with me, I respectfully dissent.