Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE OLAF L. ISAKSEN
Appeal No. 91-2308
December 13, 1991
Application for Patent filed October 16, 1989, Serial No. 07/421,657. Combination Razor And Container With Sharpener.
Steven D. Gilliam et al. for appellant
Primary Examiner -- Bryon P. Gehman
William F. Pate, III
This is an appeal from the examiner's refusal to allow claims 1 through 7, amended after final rejection. The amendment after final rejection was filed with the Appeal Brief, entered by the examiner, and obviates the rejection of claims 1 through 8 under 35 USC § 112, second paragraph. Claim 8 stands indicated as allowable if rewritten in independent form, and claims 9 through 11 stand withdrawn from consideration as nonelected. See 37 CFR § 1.142(b). These are all the claims in the application.
The claimed invention is a combination safety razor and carrying case wherein a razor blade sharpener is provided as a portion of the carrying case. More specifically, a blade attached to a carrier and held in position by a retractable blade guard is placed in the sharpener compartment and translated along two rows of interdigitated sharpening elements for sharpening. Figures 1, 2, 3, and 5B from Isaksen's application are reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Claim 1, with numerals from Figs 1, 2, and 5B (reproduced above) added, is further illustrative:
1. A combination razor assembly 11 for shaving a skin surface and container 10 for sharpening comprising:
a razor body 12 including a blade carrier 13;
a reusable blade 14 mounted on the blade carrier 13;
a blade guard 15 engaging the blade 14 to guide an edge of the blade over the skin surface for shaving;
means 64 to release said guard 15 to expose the blade 14 for cleaning and sharpening while maintaining the blade 14 attached to the carrier 13;
a container 10 having a top panel 35 and an opening for receiving the exposed blade 14,
means 40, 41 for sharpening the blade 14 in the container 10; and
whereby the reusable blade 14 may be conveniently sharpened in said container 10 without being removed from the razor assembly 11.
The references of record relied upon by the examiner as evidence of anticipation and obviousness are:
Alland 1,743,747 Jan. 14, 1930
Forbes ('518) 1,775,518 Sep. 9, 1930
Forbes ('033) 1,782,033 Nov. 18, 1930
San Cristoval 2,566,909 Sep. 4, 1951
*2 The examiner has rejected claims 1 through 3 under 35 USC § 102(b) as anticipated by either Forbes '518 or Forbes '033. According to the examiner, each of the Forbes disclosures features a combination razor assembly for shaving a skin surface and a container for treating the razor edge. Fig. V of Forbes '518 and Fig. III of Forbes '033 follow.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The examiner states the rejection thusly:
Each of Forbes '518 and Forbes '033 disclose [sic, discloses] a combination razor assembly for shaving a skin surface and container for sharpening comprising a razor body (11; elements 21-24 together; respectively) including a blade carrier (13; 22), a reusable blade (12; 13) mounted on the blade carrier, a blade guard (14; 23) engaging the blade to guide an edge of the blade over a skin surface for shaving, means to release the guard (14; 23) to expose the blade (see Figures V and III, respectively; there is obviously inherent mechanism in the razor bodies to allow the blade exposure in a relaxed position; see Forbes ('518), page 2, lines 17-27 and Forbes ('033), page 1, lines 76-82) for cleaning and sharpening while maintaining the blade attached to the carrier, a container (10; 11) having a top panel and an opening (26; 18) capable of receiving the exposed blade, means for sharpening (16 and 17; 10) the blade (disposed) in the container, means (groove 26; blocks 26) to guide the blade during relative movement with respect to the means for sharpening, whereby the reusable blade may be conveniently sharpened in the container (see Figures IV or V; Figures III, IV or V) without being removed from the razor assembly. (Examiner's Answer, page 4) (emphasis original).
The examiner has rejected claims 1 through 3 under 35 USC § 102(b) as anticipated by Alland. Fig. 2 of Alland follows:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Alland discloses a combination razor assembly for shaving a skin surface and container for sharpening comprising a razor body including a blade carrier 40, a reusable blade 32 mounted on the blade carrier, a blade guard 41 engaging the blade to guide an edge of the blade over a skin surface for shaving, means, inherent to all reusable razor bodies, to release the guard 41 to expose the blade for cleaning and sharpening while maintaining the blade attached to the carrier 40, a container having a top panel 6 and an opening 7 capable of receiving the blade, when exposed attached or unattached to the carrier, means 50 for sharpening the blade, the means 50 being in the container and means 39 to guide the blade for relative movement (such as removal from the container) with respect to the means 50 for sharpening, whereby the reusable blade may be sharpened in the container (by some external sharpening means) without being removed from the razor assembly. (Examiner's Answer, pages 5-6) (emphasis original).
*3 The examiner has rejected claims 4 through 7 under 35 USC § 103 as unpatentable over any of Forbes '518, Forbes '033 or Alland in view of San Cristoval. According to the examiner, San Cristoval discloses a razor honing element comprising interdigitated pivoted honing shoes 12 and 13. Thus, the examiner has concluded that it would have been obvious to modify any of the Forbes or Alland devices to include a container-held sharpening means such as that of San Cristoval.
With respect to the rejections of claims 1 through 3 based on the Forbes patents, appellant argues that neither of the Forbes references teaches that the treatment provided by magnetic influence "sharpens" the razor blade (Brief, page 11). Appellant is further of the view that the Forbes patents do not disclose a means for guiding the blade for movement relative to the sharpening means, inasmuch as in using the Forbes devices the blade guard is rested or "simply laid" on the magnet structure.
With respect to the § 102(b) rejection of claims 1 through 3 as anticipated by Alland, appellant is of the opinion that Alland does not disclose a means to release the blade guard to expose the blade for cleaning and sharpening while maintaining the blade attached to the blade carrier (Brief, page 15). Appellant points to the fact that Alland removes the blade from the razor for sharpening as evidence that Alland does not disclose a means for performing this function. Appellant further argues that Alland does not disclose a first and second compartment as claimed in claim 2.
With respect to the rejection under 35 USC § 103, appellant is of the opinion that the examiner has combined the references through the use of impermissible hindsight. Specifically, the appellant states that "[t]here is absolutely no teaching or suggestion that the sharpening device [San Cristoval] is intended for use in a container that provides both sharpening and storing functions." (Brief, page 19). With respect to the Forbes patent, appellant further argues that the Forbes references teach against the engagement of the blade with the treating element. With respect to the Alland device, appellant argues Alland contemplates a system wherein the blade is held stationary while the sharpening surfaces rotate about a fixed axis. In contrast, San Cristoval discloses that the blade is held relatively stationary and the interdigitated honing elements are moved or translated over the blade.
We have carefully reviewed the rejections on appeal. In light of this review, we have determined that the Forbes patents do not establish anticipation with respect to claims 1 through 3. We have further determined that the Alland reference establishes anticipation with respect to these claims. Therefore, the rejection of claims 1 through 3 based on Alland is affirmed. With respect to the obviousness rejection, we have determined that the applied prior art does not establish a prima facie case of obviousness with respect to claims 4 through 7. Therefore, the rejection of claims 4 through 7 is reversed. Our reasons follow.
*4 Appellant's principal argument with respect to the § 102 rejection of claims 1 through 3 as anticipated by the Forbes patents is that the Forbes patents do not disclose "means for sharpening the blade in the container." The examiner and appellant seem to agree that "neither Forbes reference employs the word 'sharpen' to describe what they derive." However, the examiner relies on the portion of the Forbes disclosure which states that the object of the Forbes patents is "to provide simple and effective means for producing or maintaining a good edge on a razor blade by magnetic influence" (Forbes '518 and '033, page 1, lines 3-5). Thus, it is the examiner's inference that providing and maintaining a good edge indicates that Forbes contemplates a means accomplishing the function of providing or maintaining "a sharper, better operating edge" (Answer, page 8).
Appellant argues that despite the examiner's characterization of the disclosures of the Forbes patents, neither of the Forbes references teaches that the treatment provided by magnetic influences functions to sharpen the razor blade. Appellant states that the references simply state that the devices function to produce or maintain "a good edge" on the blade. In furtherance of this argument, appellant has submitted a declaration in which appellant first states his qualification in the fields of electricity and magnetism. Appellant states in the declaration "that there is no sharpening effect to the blades 12, 21." Appellant further states "the so-called treatment of the blades does nothing more than align the electrons and protons along the edges of the blade." Appellant states that this has "no discernible effect on sharpening."
Inasmuch as the Forbes patents are completely silent as to any sharpening effect and do not describe with any specificity what results the magnetic treatment has on the razor blade edge, and inasmuch as appellant's unrebutted declaration states that no sharpening effect results from the magnetic treatment, we hold that the Forbes devices do not function to sharpen the blades. It is our conclusion that the examiner's inference that sharpening occurs during the use of the Forbes apparatuses is unsupported by the weight of evidence. This being the case, the rejection of claims 1 through 3 under 35 USC § 102(b) as anticipated by either of the Forbes patents is reversed.
The rejections of claims 4 through 7 under 35 USC § 103 as unpatentable over either of the Forbes patents or Alland in view of San Cristoval will not be sustained. We are in agreement with the appellant that there is no evidence of record that would have suggested a combination of the primary references with the secondary reference. See In re Laskowski, 871 F.2d 115, 10 U.S.P.Q.2d 1397 (Fed.Cir.1989). We fail to see how the interdigitated honing shoes of San Cristoval (which require a blade translated along their sharpening surfaces) can be properly combined with the structure of Alland (which shows rotary rolls). In our view, the only suggestion for the combination thereof springs from appellant's own disclosure. With respect to the Forbes patents, as noted above, it is our view that the evidence does not support a finding that sharpening takes place therein. Therefore, there would have been no incentive to combine the magnetic conditioning teaching of Forbes with the interdigitated honing shoes disclosed by San Cristoval which actually sharpen a razor blade.
*5 Turning to the rejection of claims 1 through 3 under 35 USC § 102(b) as anticipated by Alland, we find that Alland describes with respect to Fig. 2 a combination razor assembly with a razor body 39 having a blade carrier 40. Reusable blade 32 is mounted on the blade carrier and a blade guard 41 engages the blade to guide the blade over the skin while shaving. According to line 67 on page 2 of the Alland patent, the blade guard or clamp 41 is removable. Therefore, we find that Alland describes a means which will function to release the guard. Alland further discloses a container having a top panel 6 with an opening 7 therein for receiving the blade. Inside the container two parallel, spaced rollers 50 provide a means which functions to sharpen the blade, and pivotable arm 13 provides a means which functions to guide the blade for relative movement with respect to the sharpening rollers.
Appellant argues on page 15 of the Brief that Alland does not disclose a means having the function of releasing the guard to expose the blade for cleaning and sharpening while maintaining the blade attached to the carrier. We disagree. When removable clamp 41 is removed from the blade carrier of Alland, we note that the blade is exposed for cleaning and sharpening. We further note that appellant does not claim a means which functions to sharpen the blade while it is attached to the carrier. Therefore, appellant's arguments in this regard are not commensurate in scope with the breadth of the claims. We further credit the examiner's argument that the blade could be sharpened in the carrier by some means other than the rollers Alland discloses. In short, it is our view that Alland describes a means which functions to release the guard to expose the blade for cleaning and sharpening while maintaining the blade attached to the carrier.
Any means capable of performing the recited function meets the claim due to the scope of pending means claims discussed infra.
With respect to claim 2, it is our finding that Alland discloses first and second compartments with the sharpening means, rollers 50, in the first compartment and with the second compartment under lid 2 divided from the first compartment by wall 37. [FN1] Appellant argues that Alland is but a single compartment. However, appellant's apparent acknowledgement that Alland discloses partition 37 clearly supports the examiner's argument that Alland discloses two compartments as claimed.
RECOMMENDATION UNDER 37 CFR § 1.196(c)
We have previously determined that appellant's claim 1 does not require that the sharpening means sharpens the blade while the blade is attached to the blade carrier as appellant argues in the Brief. Accordingly, this Board makes the following recommendation. We recommend that claims 1 through 3 be allowed if the expression "means for sharpening the blade in the container;" is amended to call for--means in the container for sharpening the blade while the blade is attached to the carrie;--, provided no other reasons are found by the Examiner for rejecting the claims recommended to be amended.
SCOPE OF PENDING MEANS CLAIMS
*6 In view of the presence of means-plus-function clauses in the claims, we deem it appropriate to discuss the manner in which we interpret means clauses in general, and how we interpreted the means clauses in this particular case.
The following paragraph was first enacted in 1952 as the third paragraph of 35 U.S.C. § 112:
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 corresponding structure, material, or acts described in the specification and equivalents thereof.
Act of July 19, 1952, ch. 950, 66 Stat. 798-99. The scope of a "means" in a claim undergoing a patentability determination over the prior art in the Patent and Trademark Office (PTO) is a function of (I) whether § 112's last clause ("and such claim shall be construed to cover ...") applies and (II) if so, how. In our opinion, the clause does not apply.
I. Applicability of § 112's Last Clause
The applicability of the last clause to ex parte patentability determinations vis-a-vis the prior art is resolved by examining the statutory language, legislative history, CCPA decisions, longstanding PTO interpretation, legislative reenactment, and Federal Circuit cases.
A. History of the Legislation, PTO Interpretation, and CCPA Precedent
The last clause of section 112's last paragraph states that means-plus-function claims "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Act of July 19, 1952, ch. 950, 66 Stat. 798-99. Commentary concerning that clause as enacted in 1952 states that the clause:
relates primarily to the construction of such claims for the purpose of determining when the claim is infringed (note the use of the word "cover"), and would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art, that is, the Patent Office is not authorized to allow a claim which "reads on" the prior art.
P.J. Federico, "Commentary on the New Patent Act," 35 U.S.C.A. 1, 25-26 (1954). Federico's passage notes that "cover" refers to infringement, and contrasts claim "construction," done for infringement purposes, with PTO patentability determinations. Id. Federico assisted in drafting of the Act and was regarded as an expert in the subject matter of the Act. Report of the Committee on the Judiciary, H.R. 7794, reprinted at 34 J.Pat.Off.Soc'y 549, 552 (1952). Federico's contemporaneous commentary accompanying the new statute in U.S.C.A. deserves consideration as showing the last clause was intended to affect infringement cases and not to affect PTO ex parte patentability determinations vis-a-vis the prior art.
*7 Similarly, Charles J. Zinn's contemporaneous commentary says:
The final paragraph of section 112 relating to functional claims is new. It recognizes the validity of combination claims wherein the novelty is expressed in functional terms. It offsets the theory of the Halliburton case but does not go so far as to permit the use of single means claims.
Commentary on New Title 35, U.S.Code "Patents," reprinted in 1952 U.S.Code Cong. and Ad.News 2509, 2514 (emphasis added). Zinn's passage notes the final paragraph's effect on claim validity (a post-issuance, court-determined matter) but not on patentability (a pre-issuance, PTO-determined matter). Id. It also notes that the final paragraph addressed Halliburton Co. v. Walker, 329 U.S. 1 (1946). Halliburton involved infringement/validity, not ex parte patentability. Id. Zinn, as the Judiciary Committee's law revision counsel, directed and supervised the actual work of preparing the preliminary drafts and the bill that became Title 35. Report of the Committee on the Judiciary accompanying H.R. 7794, reprinted at 34 J.Pat.Off.Soc'y 549, 552 (1952). Thus, Mr. Zinn's insight is consistent with the proposition that the third paragraph of § 112 affects validity but not ex parte patentability determinations.
Less than six months after the effective date of the 1952 act, an eight-member panel of the Board of Appeals decided Ex Parte Ball, 99 USPQ 146 (Bd.Pat.App.1953). The eight-member panel in Ex Parte Ball included then Commissioner of Patents Watson, as well as Examiner-in-Chief Federico. Ball contended that:
"each of the appealed claims distinguishes from the prior art in the recitation of a means or an elemental structure for performing a specified function that is not contemplated by the cited references...."
Id. at 148. Before enactment of § 112's last paragraph, the Board had sustained rejections of Ball's claims because, comparing the claim language to the prior art, "any differences which exist are only functionally expressed" in the claims. Id.
After enactment, the Board withdrew that position on reconsideration, apparently due to the first clause of § 112's last paragraph: "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...." The Board reversed rejections of those claims that recited a novel function:
this function, as set forth, is distinctly unlike any function which is or could possibly be performed by the apparatus of [the prior art].
Id. at 148-49.
However, the Board sustained rejections of the claims (e.g., claim 39) whose recited function was performed by the prior art. Id. at 150. The Board reasoned that despite the last clause ("and such claims shall be construed to cover ...") of § 112's last paragraph, the claims in a pending application would be controlled by § 112's second paragraph, requiring the language itself of a claim to particularly point out the novel subject matter. Id. The dominance of the second paragraph over the third was simultaneously stated in dictum in In re Arbeit, 206 F.2d 947, 958, 99 USPQ 123, 131 (CCPA 1953). Similar statements have appeared in all eighty-five subsequent editions of the Manual of Patent Examining Procedure (MPEP), from 1955 to present, specifically referring to Ex Parte Ball. MPEP § 706.03(c).
*8 In 1957, the CCPA squarely held that the last clause of § 112's last paragraph ("and such claim shall be construed to cover ...") does not apply to the PTO's patentability determinations. In re Lundberg, 244 F.2d 543, 548, 113 USPQ 530, 534 (CCPA 1957). The CCPA stated:
notwithstanding the third [now sixth] paragraph of section 112, it is the language itself of the claims which must particularly point out and distinctly claim the subject matter which the applicant regards as his invention, without limitations imported from the specification, whether such language is couched in terms of means plus function or consists of a detailed recitation of the inventive matter. Limitations in the specification not included in the claim may not be relied upon to impart patentability to an otherwise unpatentable claim.
Id. That holding was central to the CCPA's judgment affirming the PTO's rejection of claim 54:
It is thus apparent that [prior art] either expressly discloses or reasonably would suggest to one skilled in the art, each element in the claimed combination, including the recited function of the detecting instrument. In view of our foregoing analysis of 35 U.S.C. § 112, it is not seen that claim 54 patentably defines over the prior art. We accordingly sustain the board's rejection of this claim.
Id., 224 F.2d at 550, 113 USPQ at 536.
Following the CCPA's 1957 Lundberg decision, in 1965 Congress reenacted the "third" paragraph of § 112 (1952) as the "sixth" paragraph of § 112. Pub.L. 89-83, § 9, 79 Stat. 261 (1965). In enacting Public Law 89-83, Congress saw no reason to disagree with the Lundberg and PTO interpretations: that the last clause does not apply in proceedings before the PTO to determine whether claimed subject matter is patentable over the prior art under 35 USC §§ 102 or 103. See Lorillard v. Pons, 434 U.S. 575, 580 (1978) ("Congress is presumed to be aware of an administrative or judicial interpretation of a statute and to adopt that interpretation when it re-enacts a statute without change"); Atkins v. United States, 556 F.2d 1028, 1039 (Ct.Cl.1977), cert. denied, 434 US 1009 (1978) ("A cardinal principle of statutory interpretation is that, in the absence of a clearly expressed intent to the contrary, the revision or recodification of a statute indicates approval of court interpretation of the statute made prior to reenactment"). Upon reenactment, Congress did not in any way express disapproval of the PTO/CCPA means-plus-function interpretation as applied to ex parte examination.
In 1968, the CCPA in deciding In re Sweet, 393 F.2d 837, 841-42, 157 USPQ 495, 499 (CCPA 1968) noted, consistent with Lundberg and the PTO's now well-established interpretation of the "third/sixth" paragraph of § 112, that:
*9 However, a recitation of "means" for performing a function is interpreted broadly to cover all means capable of performing the stated function and is not limited to the particular structure which the application may disclose.
The CCPA affirmed as to those claims where the claimed function was obvious from the prior art, but reversed where the function was not disclosed or otherwise made obvious (i.e., claim 17). Id., 393 F.2d at 842-43, 157 USPQ at 500.
In 1975, Congress again reenacted the "sixth" paragraph of § 112. Pub.L. 94-131, § 7, 89 Stat. 690-91 (1975). Despite a second amendment of § 112, Congress again declined to legislatively overrule the CCPA/PTO interpretation of the "third/sixth" paragraph of § 112, as applied to patentability determinations of claims pending before the PTO vis-a-vis the prior art. See Ralden Partnership v. United States, 891 F.2d 1575, 1579 (Fed.Cir.1989) (an inference can be drawn that Congress acquiesced in agency interpretation of statute twice reenacted). Only Congress can "unadopt" that interpretation.
The last clause of § 112's last paragraph was consistently interpreted by the CCPA and the PTO up to the time of the creation of the Federal Circuit. The PTO has now employed that interpretation without difficulty for thirty-eight years, a period in which the PTO has issued over 2,436,000 patents.
There is no question that, both prior to and after creation of the Federal Circuit, courts of appeals applied the last clause of § 112's last paragraph in infringement cases. It is also true that the last clause was not applied during PTO patentability determinations. But that is exactly what we believe Congress intended. In this respect, over 30 years of experience from 1952 to 1983 provides a certain "comfort level." Patent practitioners generally understand how the last paragraph of § 112 was, and is, applied by the PTO to determine whether means-plus-function limitations differ from the prior art.
Until creation of the Federal Circuit, the CCPA applied the Lundberg rationale to claims undergoing patent examination and courts of appeals applied the last clause of § 112's last paragraph in infringement cases. Nothing in the Federal Courts Improvement Act of 1982, Pub.L. 97-164, Title I (1982), was intended to change the manner in which the Federal Circuit was to deal with interpretation of claims during examination or construction of claims in infringement cases.
B. Federal Circuit Treatment
The "sixth" paragraph of § 112 was consistently interpreted and applied by the CCPA and the PTO up to the time of the creation of the Federal Circuit. However, it has been inconsistently interpreted by the Federal Circuit. Insofar as we are aware, In re Mulder, 716 F.2d 1542, 1549, 219 USPQ 189, 196 (Fed.Cir.1983), represents the first arguable departure from Lundberg. The Mulder court said:
*10 With respect to claim 9, we note that it is drafted in "means plus function" format, so that it is "construed to cover the corresponding structure * * * described in the specification and equivalents thereof." 35 U.S.C. § 112. As stated above, the board said that de Troye's arrangement constituted means to reduce input series resistance. Appellants have neither asserted nor shown that de Troye's structure is not the equivalent of the structure disclosed in their specification for reducing input series resistance.
The Mulder Board said what it said because it found de Troye to disclose the function. Hence, consistent with long-standing practice, it made no inquiry into the equivalency of the structures of the reference and Mulder. We assume that appellants (Mulder) did not present a non-equivalence argument, because then well-established Lundberg/Sweet principles would have rendered such an argument futile.
In June of 1986, a journal article questioned whether the PTO was properly applying the sixth paragraph of § 112 in resolving §§ 102/103 issues. Moy, "The Interpretation of Means Expression During Examination," 68 J.Pat.Off.Soc'y 246 (1986). Moy acknowledges the existence of, and discusses, published (precedential) and unpublished (non-precedential) ex parte CCPA/Federal Circuit decisions which support the PTO's view. Id. at 256-59. Moy thinks that it is wrong for the PTO to confine its examination of means-plus-function clauses to simply whether the identical function is performed. However, Moy does not address whether Congress' two reenactments of the means- plus-function provisions of § 112 constitute legislative adoption of the PTO's interpretation of the sixth paragraph based on Lundberg. Nor does Moy point to anything in the Federal Courts Improvement Act which suggests that the newly created Federal Circuit was no longer to apply Lundberg.
From a historical perspective, we note that non-precedential Federal Circuit opinions have applied the Lundberg rule. See, e.g., In re Boersma, No. 84- 627 (Fed.Cir. May 4, 1984) (unpublished), summarized at 28 Pat.Tm & Copyrt.J. 83 (BNA May 24, 1984). Lundberg was addressed in concurring opinions of In re Queener, 796 F.2d 461, 230 USPQ 438 (Fed.Cir.1986). Queener argued that the PTO erroneously refused to apply the last clause of § 112's last paragraph. The Court affirmed without reaching Queener's argument, explicitly indicating that it "need not, and does not" reach other matters, "including those pertaining to the 'means plus function'...." Id., 796 F.2d at 464, 230 USPQ at 440. Senior Judge Miller, concurring, suggested that Queener's argument "is reasonable and should not be rejected out of hand or ignored by the majority and Judge Newman's concurring opinions." Id. Judge Newman separately concurred, citing Lundberg and noting:
*11 [I]n view of Senior Judge Miller's interpretation of precedent to hold that the last paragraph of section 112 is reasonably applied, in prosecution before the PTO, so that the claims need not distinguish from the prior art, I write separately to express my concern lest we reopen that closed book. It is now beyond debate that limitations from the specification will not, during examination before the PTO, be imputed to the claims in order to avoid prior art; such limitations must be specifically stated in prior art; such limitations must be specifically stated in the claims ... This law has been consistently applied.
Id., 796 F.2d at 464, 230 USPQ at 440.
In 1989, a Federal Circuit panel decided In re Iwahashi, 888 F.2d 1370, 1375 n. 1, 12 U.S.P.Q.2d 1908, 1912 n. 1 (Fed.Cir.1989). In re Iwahashi involved a § 101 rejection, not a rejection based on the prior art. Under In re Meyer, 688 F.2d 789, 796 n. 6, 215 USPQ 193, 199 n. 6 (CCPA 1982), equivalence under § 112's last paragraph is applicable to § 101 rejections, but not to rejections based on the prior art. The Iwahashi panel did not explicitly recognize the Meyer distinction.
Iwahashi note 1 refers to a statement of law in In re Sweet, supra, to the effect that "means" for performing a function is interpreted broadly to cover all means capable of performing the stated function and is not limited to the particular structure which the application may disclose. Note 1, however, disagrees with the "truth" (correctness) of Sweet's statement of law. Note 1 says that the statement is partly true and partly untrue. The untrue part is said to be the first part, i.e., that means is interpreted to cover all means for performing the function. According to the note, the first part of the statement should have said that the means is interpreted as limited to the means disclosed in the specification and all equivalents thereof which perform the function.
"The immediately preceding two paragraphs" of the Sweet opinion, i.e., those appearing at 393 F.2d at 841, col. 2, 157 USPQ at 499, col. 1-2, are said to demonstrate that Sweet considered equivalence of structure under the last paragraph of § 112. In re Iwahashi, supra. We do not believe the "two paragraphs" demonstrate what the footnote says.
The Iwahashi footnote warns against removing the disputed statement of law from its context. The disputed statement of law in In re Sweet related to different claim language than did the two paragraphs. In volume 393 of the F.2d reporter, the two paragraphs related only to the function discussed on pages 840-41, whereas the disputed statement of law related only to the discussion of the whereby clause on page 842.
The two paragraphs dealt with whether the reference had a means to perform the claimed function "to simultaneously change the position of said cutting elements for cutting a different size diameter." In re Sweet, supra, 393 F.2d at 841, 157 USPQ at 499. The only precedent cited in the two paragraphs, In re Danly, 263 F.2d 844, 847, 120 U.S.P.Q.2d 528, 531 (CCPA 1959), also dealt only with whether a reference exhibited "actual performance of the stated functions," as those functions were interpreted.
*12 The disputed statement of law, however, dealt with whether the whereby clause (whereby said cutting elements will "cut at substantially the same distance from the center of rotation on said different size diameter") required that the cutting elements be in alignment with radii of the workpiece. In re Sweet, supra, 393 F.2d at 842, 157 USPQ at 499-500. Since the language itself of the claim did not require such alignment, the CCPA refused to read it into the claim. Id. at note 6 and accompanying text.
In 1990, a Federal Circuit panel decided In re Bond, 910 F.2d 831, 15 U.S.P.Q.2d 1566 (Fed.Cir.1990). Without citing Lundberg, that panel made a statement which we believe is directly contrary to Lundberg regarding a pending claim:
While a "means-plus-function" limitation may appear to include all means capable of achieving the desired function, the statute requires that it be "construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112 ¶ 6 (emphasis added);
In re Bond, 910 F.2d at 833, 15 U.S.P.Q.2d at 1568. The panel remanded to the Board because the Board had not determined equivalence under § 112 ¶ 6. The Board had not done so because it was (and is) the PTO's position that the last clause does not apply to pending applications.
The following mandatory authority forecloses PTO interpretation of pending means claims as limited to structure, material, or acts described in the specification and equivalents thereof under 35 U.S.C. § 112.
Supreme Court cases hold that an agency's consistent long-standing interpretation of a statute is entitled to deference. Chevron U.S.A. Inc. v. Natural Resources Defense Council, 467 U.S. 837, 843-45, reh'g denied, 468 U.S. 1227 (1984); United States v. Clark, 454 U.S. 555, 565 (1982); FEC v. Democratic Senatorial Campaign Committee, 454 U.S. 27, 32 (1981). In FEC, the Court of Appeals had struck down an agency interpretation of a statute. The Supreme Court reversed because the agency's interpretation was within its authority rather than frustative of the policy Congress sought to implement or "inconsistent with the statutory mandate." FEC, supra.
As set forth above, the PTO has consistently and historically interpreted the last clause ("and shall be construed to cover ...") as inapplicable to pending applications. In re Queener, 796 F.2d 461, 464, 230 USPQ 438, 440 (Fed.Cir.1986) (Newman, J., concurring); Moy, "The Interpretation Of Means Expressions During Prosecution," 68 J.Pat.Tm.Off.Soc'y. 246, 251 (1986). Thus, the PTO's interpretation of the last clause of § 112's last paragraph is not easily overcome. In fact, application of the last clause to applications pending before the PTO is foreclosed by (1) the clause itself, (2) binding precedent, and (3) Congressional re-enactment.
1. The Clause Itself
*13 As discussed below, the Supreme Court used the terms "construed" or "cover" around 1952 when referring to post-issuance matters in court (e.g., validity or infringement), and not to interpretation of claims by the PTO in a patentability determination. Therefore, it is reasonable to conclude that a 1952 statute that used either of those terms referred only to matters in court, not in the PTO. Since the last clause of § 112's final paragraph used (a) "construed" and (b) "covered" in the same phrase "construed to cover", it must have referred only to infringement cases in court. Use of the term (c) "equivalents" further indicates that a court, not a PTO, determination is called for. The combined import of all three terms is clear.
The Supreme Court has used "construed" only to refer to post-issuance court matters and not to PTO patentability determinations. See, e.g., Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 276-77 (1948), aff'd on reh'g, 339 U.S. 605 (1949), reh'g denied, 340 U.S. 845 (1950). The Supreme Court's usage just prior to the 1952 enactment is especially relevant to the meaning attributed to "construed" in the 1952 Act. The last paragraph of § 112 was enacted in response to then-recent Supreme Court precedent. Federico, supra; Zinn, supra.
In Graver Tank, the Supreme Court reversed the Court of Appeals for erroneously importing limitations from the specification into the claims. Graver Tank, 336 U.S. at 276-77. The relevant passage dealt with a district court's holding invalid certain claims asserted in an infringement action:
The Court of Appeals [erroneously] considered that because there was nothing in the record to show that the applicants for the patent intended by these claims to assert a monopoly broader than nine metallic silicates named in the specifications, the [district] court should have construed the claims as thus narrowed and limited by the specifications.
Id. Because of the similar topic of that passage, and because Graver Tank was the seminal case on equivalents, Congress' usage of "construed" four years later in the last clause of § 112's last paragraph was predictably consistent with that passage. Claims were "construed" by courts.
As another example, in Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 149 (1950), reh'g denied, 340 U.S. 918 (1951), the Supreme Court applied § 112's precursor in an infringement case. The Court found clearly erroneous a district court's "construction" of an asserted claim because the limitation relied on was:
not mentioned in the claims, except, perhaps, by a construction too strained to be consistent with the clarity required of claims which define the boundaries of a patent monopoly.
*14 Id. Claims were "construed" by courts.
The Federal Circuit's usage of "construe" is not especially probative of legislative intent because it is well after the 1952 enactment. However, when addressing why the PTO's standards for patentability should be stricter than a district court's standards for validity, the Federal Circuit distinguishes between claims being "construed" by district courts, and "interpreted" or the like by the PTO. See, e.g., In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.Cir.1984); see also In re Etter, 756 F.2d 852, 858-59, 225 USPQ 1, 5-6 (Fed.Cir.1985) (in banc) (rule of claim "construction" has no role in PTO reexamination), cert. denied, 474 U.S. 828 (1985). Similarly, in Burlington Indus. v. Quigg, 822 F.2d 1581, 1583, 3 U.S.P.Q.2d 1436, 1438 (Fed.Cir.1987), the court stated:
Issues of judicial claim construction such as arise after patent issuance, for example during infringement litigation, have no place in prosecution of pending claims before the PTO ...
Federico's above-quoted statement reveals that the word "cover" in § 112 is used to connote an infringement context. No known Supreme Court precedent uses the word "cover" in an ex parte patentability case.
Section 112's reference to "equivalents" indicates an infringement, not prosecution, setting. Compare Graver Tank & Mfg. Co., supra, 339 U.S. at 610 ("equivalence ... is to be decided by the trial court."). "Equivalents" under § 112 speaks solely to infringement; is judicially, not administratively, determined; and involves redefining issued claims:
exists solely for the equitable purpose of "preventing an infringer from stealing the benefit of an invention" ... equivalency is judicially determined by reviewing the content of the patent, the prior art, and the accused device, and essentially redefining the scope of the claims.
Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 805 F.2d 1558, 1572, 231 USPQ 833, 842 (Fed.Cir.1986), reh'g denied, 846 F.2d 1369, 6 U.S.P.Q.2d 1886 (Fed.Cir.), reh'g denied, 7 U.S.P.Q.2d 1414 (Fed.Cir.1988) (in banc). The inclusion of "equivalents" in § 112's last paragraph appears to address concerns of Halliburton Co. v. Walker that dealt only with potential infringers. Halliburton, supra, 329 U.S. at 12-13.
2. Binding Precedent
As a CCPA case, Lundberg is binding precedent. South Corp. v. United States, 690 F.2d 1368, 215 USPQ 657 (Fed.Cir.1982) (in banc).
*15 The Lundberg case cannot be distinguished on the grounds that no appealed claims were held patentable. The CCPA did not decide whether the disclosed means would have been obvious if incorporated into a claim. Lundberg, supra, 244 F.2d at 551, 230 USPQ at 537.
The Lundberg case cannot be distinguished as one in which the applicant urged limitation of a claim to the disclosed means only exclusive of equivalents. The CCPA held that a function clause cannot be used to incorporate any limitations whatsoever into an applicant's claims, id., and that limitations not included in the language itself of the claims cannot impart patentability, id., 244 F.2d at 548, 113 USPQ at 534. It is irrelevant to those holdings whether attempted limitations would come from the disclosed means or from its equivalents. The CCPA noted that § 112 required means-plus-function claims to be "construed to cover the corresponding structure, * * * described in the specification and equivalents thereof." Id., 244 F.2d at 546, 113 USPQ at 533 (emphasis added).
In his Brief, Lundberg repeatedly argued for limitation to means "described in the specification, and equivalents thereof." Lundberg's Brief for Appellants, pages 9, 14, 35, and 38 (emphasis added). Lundberg implicitly argued that the prior art was not the same as, or equivalent to, the means described in his specification.
For example, Lundberg quoted his specification's detailed description of claim 54's detecting means. Lundberg's Brief at 33-34. Lundberg argued that the Board had erred in saying that the prior art means was the same. Lundberg's Brief at 34. Lundberg argued further that the prior art means was not equivalent to Lundberg's disclosed means in that he argued the prior art distinguished itself from the type of detector means (a detector of one or more components of magnetic field) disclosed in Lundberg's specification. Lundberg's Brief at 35. Lundberg cited record page 210 showing that the prior art distinguished itself from the type of detector means disclosed in Lundberg's specification. Lundberg's Brief at 35. Lundberg concluded that section of argument citing the 1952 Patent Act as requiring limitations "described in the specification and equivalents therefor [sic, thereof]." Lundberg's Brief at 35.
As another example, Lundberg argued that claim 54's airplane means for transporting referred to aircraft capable of the type of movement "repeatedly set forth in the present application" which he alleged was not even along the lines of the prior art's contemplation. Lundberg's Brief at 24-26.
c. Congress' Reenactments
Acts of Congress are mandatory authority. As discussed above, Congress' reenactments implicitly adopted and re-adopted the PTO/CCPA interpretation.
D. Effect of Federal Circuit Panel Decisions
*16 Without addressing In re Lundberg, Federal Circuit panels have made statements which in our view appear inconsistent with the above statement of mandatory authority, viz., In re Bond, 910 F.2d 831, 833, 835, 15 U.S.P.Q.2d 1566, 1568, 1569 (Fed.Cir.1990), and arguably In re Iwahashi, 888 F.2d 1370, 1375 n. 1, 12 U.S.P.Q.2d 1908, 1912 n. 1 (Fed.Cir.1989) (not a prior art case) and In re Mulder, 716 F.2d 1542, 1549, 219 USPQ 189, 196 (Fed.Cir.1983) (no definitive treatment). Those panel decisions do not overcome the mandatory authority set forth supra. For example, they do not overcome In re Lundberg which is binding precedent in the Federal Circuit. See Capitol Elec. Inc. v. United States, 729 F.2d 743, 746 (Fed.Cir.1984); South Corp. v. United States, 690 F.2d 1368, 215 USPQ 657 (Fed.Cir.1982) (in banc). Although Note 1 in In re Iwahashi disagreed with the "truth" of Sweet's statement of law, the In re Iwahashi panel had no authority to overrule any CCPA case. And, of course, no court can overcome the mandatory authority, discussed above, of § 112's last clause itself and Congress' re-enactments.
E. Other Considerations
Interpreting "means" in pending claims as including any capable means rather than the disclosed means and equivalents thereof, comports more with (1) the reverse doctrine of equivalents, (2) the statutory presumption of validity, and (3) policy considerations.
1. Reverse Doctrine of Equivalents
Section 112 ¶ 6 operates like the reverse doctrine of equivalents. Intel Corp. v. United States Int'l Trade Comm'n, Appeal No. 89-1459, 20 U.S.P.Q.2d 1161, 1179 (Fed.Cir. September 17, 1991). One treatise states that:
Lundberg represents the better interpretation of Section 112 ¶ 6. This section is best understood as an expression of the reverse doctrine of equivalents. The reverse doctrine addresses how to treat later technical developments covered in words but not in substance by the claims in suit.
2 Patent Law Perspectives, ¶ 2.9, p. 2-1172.1 through p. 2-1172.7 (1991). Thus, consideration of equivalents at the time of prosecution is an unnecessary expenditure of resources and ineffectual because equivalence, and the reverse doctrine in particular, speaks to future advances. See Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568 (1898); Graver Tank Mfg. v. Linde, supra, 339 U.S. at 608. Halliburton Co. v. Walker, 329 U.S. 1, 12, 13 (1946), was addressed by § 112's last paragraph and points out that a device may not be known as of the patent issue date as an equivalent of a claimed means.
Neither the PTO nor an applicant can predict what means will be shown after issuance of a patent to be equivalent to the claimed means:
*17 It is not required that those skilled in the art knew, at the time the patent application was filed, of the asserted equivalent means of performing the claimed functions; that equivalence is determined as of the time infringement takes place.
Texas Instruments, Inc. v. United States I.T.C., 805 F.2d 1558, 1563, 231 USPQ 833, (Fed.Cir.1986), reh'g denied, 846 F.2d 1369, 6 U.S.P.Q.2d 1886 (Fed.Cir.) (note concurring opinion by Judge Davis), reh'g denied, 7 U.S.P.Q.2d 1414 (Fed.Cir.1988) (in banc). See also D.M.I., Inc. v. Deere and Co., 755 F.2d 1570, 1574, 225 USPQ 236, 238 (Fed.Cir.1985) ("there is and can be no requirement that applicants describe or predict every possible means of accomplishing that function"); S.R.I. Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ 577, 586 (Fed.Cir.1985) (in banc) (plurality) ("The law does not require the impossible. Hence, it does not require that an applicant describe in his specification every conceivable and possible future embodiment of his invention").
If pending means claims were interpreted as limited to disclosed means and equivalents thereof, patent applicants would have to prosecute based on what they predict to be or not to be equivalent in the future. That is impractical, if not nonsensical, because equivalence is determined "as of the time infringement takes place," Texas Instruments, supra. Statements during prosecution, however, may estop patentees from asserting a full range of equivalents against infringers in the future. See 2 Patent Law Perspectives, supra at 2-1172.5 (1991). Lacking such statements, courts would re-determine equivalence during infringement suits, duplicating and superseding the PTO's determinations.
2. Presumption of Validity
In courts, issued claims are presumed valid. 35 USC § 282. Thus, courts determining validity in infringement cases give a narrower meaning to issued claims (to preserve their validity) than the "broadest reasonable interpretation" PTO gives to pending claims. In re Etter, 756 F.2d 852, 858- 59, 225 USPQ 1, 5-6 (Fed.Cir.1985) (in banc). The court stated:
In litigation, where a patentee cannot amend his claims, or add new claims, the presumption [of validity], and the rule of claim construction (claims shall be construed to save them if possible), have important roles to play. In reexamination, where claims can be amended and new claims added, and where no litigating adversary is present, those roles and their rationale simply vanish.
Id. See also In re Zletz, 893 F.2d 319, 321, 13 U.S.P.Q.2d 1320, 1322 (Fed.Cir.1989) (citing In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) for the proposition that "before the application is granted, there is no reason to read into the claim the limitations of the specification"). Because § 282's presumption of validity and the narrowing rule of claim construction do not apply to pending claims, In re Etter, supra, the reasons for construing issued means claims as limited to disclosed means and equivalents thereof under § 112 "simply vanish" in PTO examination.
*18 A validity appeal from a district court is "quite another thing" (compared to an ex parte PTO appeal) because, inter alia, various additional segments (e.g., § 282) of the patent statute are applicable to an issued patent. Compare Polaroid Corp. v. Eastman Kodak Co., 789 F.2d 1556, 1559 n. 8, 229 USPQ 561, 563 n. 8 (Fed.Cir.), cert. denied, 479 U.S. 850 (1986).
3. Policy Considerations
Given PTO's long-standing interpretation of the sixth paragraph, judicially sanctioned in Lundberg and twice implicitly adopted by Congress through reenactments of § 112, any change in the practice is properly addressed by Congress--not the courts or PTO. A change in practice involves policy issues which would affect many involved in the patent system--PTO, patentees, and accused infringers. These and other policy issues are appropriately debated and resolved by Congress:
a. PTO Workload
The PTO's workload will increase; without the benefit of live testimony and testing facilities, the PTO will have to resolve structural equivalency.
b. Practical Application
Patent applicants may have concerns about pre-committing views on non-equivalency prior to the time a patent is asserted.
Under § 112, a court may determine the breadth of equivalents to be afforded means-plus-function clauses in issued patents with reference to, inter alia, expert testimony and the prosecution history. Intel Corp. v. United States I.T.C., Appeal No. 89-1459, 20 U.S.P.Q.2d 1161, 1179-80 (Fed.Cir. September 17, 1991). The PTO has no facility for calling its own expert to balance expert testimony that arguably could be made of record under 37 C.F.R. § 1.132. Before prosecution is complete, there is no coherent prosecution history; it is a moving target.
Because equivalency is determined with reference to testimony of experts and others versed in the technology, it requires a determination of credibility. Graver Tank, supra, 339 U.S. at 609. The Patent and Trademark Office is ill-equipped to assess credibility in ex parte patentability determinations.
Thus, it would be impractical for the PTO to attempt to apply the last clause of § 112's final paragraph when comparing prior art to claims in ex parte examination.
c. Burden Shifting
If the PTO accepted an applicant's non-equivalency argument, the burden of proof may shift in infringement cases; the accused infringer would have to prove non-equivalency, whereas today the patent owner must prove equivalency.
If pending means claims were interpreted as limited to the disclosed means and equivalents thereof without explicit claim language, it would be much more difficult to read and understand such claims. For example, identically worded claims in different applications could have different meanings, even to the point of mutual allowability and non-interference.
II. If § 112 Applies, How?
*19 The PTO must apply the "broadest reasonable interpretation" to pending claims.
In In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed.Cir.1984), this court said that claims subject to reexamination will "be given their broadest reasonable interpretation consistent with the specification, and limitations appearing in the specification are not to be read into the claims." 740 F.2d at 1571, 222 USPQ at 936. That standard is applied in considering rejections entered in the course of prosecution of original applications for patent. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed.Cir.1985) (in banc), cert. denied, 474 U.S. 828 (1985) (interpreting "means" clause).
That requirement would be applicable to the PTO even if § 112's last clause were also applicable. The only case directly requiring the PTO to determine equivalents under ¶ 6 required the PTO at the same time to apply the "broadest reasonable interpretation" to the claim. In re Bond, 910 F.2d at 833, 15 U.S.P.Q.2d at 1567. In our view, the broadest reasonable interpretation of "means" for performing a function renders all capable means equivalent.
A court in a validity/infringement case must apply a narrow construction dictated by § 282's presumption of validity, as discussed supra. In a validity/infringement case, "section 112 ¶ 6 operates to cut back on the types of means which could literally satisfy the claim language." Johnston v. Ivac Corp., 885 F.2d 1574, 1580, 12 U.S.P.Q.2d 1382, 1386 (Fed.Cir.1989) (emphasis in original). In such a case, claims are not given the broadest reasonable construction. Compare In re Etter, supra, 225 USPQ at 8, 756 F.2d at 862 (Nies, J., concurring) ("claims in litigation are to be 'so construed, if possible as to sustain their validity.' [citation omitted]. Claims in reexamination, on the other hand, 'will be given their broadest reasonable interpretation, the Johnston v. Ivac Corp. considerations do not dictate the same result in the PTO. Compare In re Zletz, supra, 893 F.2d at 321, 13 U.S.P.Q.2d at 1322 (Board erred by applying the mode of claim construction used by courts in litigation).
Even if § 112's last clause applied to the PTO's ex parte patentability determinations vis-a-vis the prior art, and even if all capable means were not equivalent, the clause would not limit pending claims to disclosed and equivalent means. As set forth supra, § 112 ¶ 6 operates like the reverse doctrine of equivalents and speaks only to post-issuance advances. Thus, preissuance, a claim encompasses disclosed and equivalent means as well as any other means for performing the function.
*20 The rejection of claims 1 through 3 under 35 USC § 102(b) as anticipated by Forbes '518 or Forbes '033 is reversed.
The rejection of claims 4 through 7 under 35 USC § 103 as unpatentable over any of Forbes '518, Forges '033 or Alland in view of San Cristoval is reversed.
The rejection of claims 1 through 3 under 35 USC § 102(b) as anticipated by Alland is affirmed.
A recommendation under 37 CFR § 1.196(c) has been made by the Board.
The decision of the examiner is affirmed in part. A recommendation (37 CFR § 1.196(c)) has been made. Should appellant elect to adopt the recommendation, the time within which he may file an amendment for that purpose is hereby set to expire one month from the date of this decision.
37 CFR § 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
37 CFR § 1.196(c)
BOARD OF PATENT APPEALS AND INTERFERENCES
Harry F. Manbeck, Jr.
Saul I. Serota
Ian A. Calvert
William F. Pate, III