Ex Parte Iwamoto et al

Board of Patent Appeals and Interferences

Nov 23, 2010

10543051 (B.P.A.I. Nov. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/543,051 07/21/2005 Manabu Iwamoto 590157-2024 5677
7590 11/23/2010
Matthew K Ryan
Frommer Lawrence & Haug
745 Fifth Avenue
New York, NY 10151
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
11/23/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MANABU IWAMOTO and KENJI OSHIMA
____________________

Appeal 2009-004015
Application 10/543,051
Technology Center 2800
____________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and MICHAEL W.
O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004015
Application 10/543,051

Appellants have filed a Request for Rehearing (“Request”) under
37 C.F.R. § 41.52. The Request seeks reconsideration of our Decision
bearing a date of May 28, 2010, and mailed June 1, 2010 (“Decision”)
entering new grounds of rejection against claims 7 and 9 under 35 U.S.C.
§ 112, second paragraph, and against claims 11 and 12 under 35 U.S.C.
§ 112, first paragraph.2 We have jurisdiction over the Request under
35 U.S.C. § 6(b).
Appellants assert that we have misapprehended or overlooked several
points, identified in the Request, that pertain to each of the new grounds of
rejection. We grant the Request to the extent that we have now considered
the arguments, and herein vacate the rejection of claims 7 and 9 under
35 U.S.C. § 112, second paragraph, but otherwise deny the Request.
Claims 7 and 9--Indefiniteness under 35 U.S.C. § 112, Second Paragraph
The rejection of these claims was predicated on our conclusion that
the claim language reciting “an empty ink container recognizing means”
which “recognizes that the ink container is exhausted” when an elapsed time
is longer than a predetermined inkless time, and which “reads out numeric
information from a storage means which is provided on [an] ink container”
and “sets the inkless time on the basis of the numeric information”, is a
means-plus-function limitation subject to the requirements of 35 U.S.C.
§ 112, sixth paragraph. Appellants have not contested this, and instead
posture that the conclusion will be assumed to be correct “for the sake of
argument”. (Request A-4). Appellants fail to identify any asserted
misapprehension on our part, or any facts or evidence that may have been

2 The Decision reversed the appealed rejection of claims 7, 9, 11 and 12
under 35 U.S.C. § 103(a).
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Application 10/917,012

overlooked by us, in reaching this conclusion forming the cornerstone for
the rejection.
Appellants take issue with our finding that there is no disclosure in
Appellants’ Specification of any structure that corresponds to the means-
plus-function limitation calling for an “empty ink container recognizing
means” (hereafter “EICRM”). More specifically, Appellants contend that
“the specification does show structure for the claimed element.” (Request
A-4). In support of that contention, Appellants identify a number of
excerpts from the written description in the Specification that describe the
operation or function of the EICRM, as well as that the EICRM is connected
to a connector 9 that is to be electrically connected to a contact 83 of a
storage means 8 so that a parameter stored in the storage means representing
an inkless time may be read out by the EICRM. (Request A-4 to A-6).
Appellants’ position is that these excerpts evidence that:
[t]he specification clearly indicates that the
[EICRM] is a device that can electrically connect
to a memory and read out information -- a
parameter stored in memory -- from that memory,
as well as set a time by referring to a correction
table. Hence, it is clear that it is a computer or
computer module.
(Request A-6).
Further citing to guidance set forth in MPEP § 2181, and examples
from case law included therein, Appellants further urge that,
the Board failed to appreciate that the specification
amply described structure of an [EICRM] such that
ordinarily skilled artisan would understand what
structure must perform the function recited in the
means-plus-function limitation (e.g., implemented
by or on a computer)…and hence would be clear.
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Application 10/917,012

(Request A-7).
What is clear is that Appellants’ claim that “the specification does
show structure for the claimed element” (Request A-4)(emphasis added) is
not borne out by the excerpts presented, nor by the commentary thereon
presented by Appellants’ representative. Appellants’ Specification contains
no explicit disclosure of such structure. A disclosure of structure
corresponding to a means-plus-function limitation may, however, be implicit
in the written description, but only if it would have been clear to those
skilled in the art what structure must perform the function recited in the
means-plus-function limitation. Atmel Corp. v. Information Storage
Devices Inc., 198 F.3d 1374 (Fed. Cir. 1999)(discussing that this proposition
is consistent with holding in In re DosseI, 115 F.3d 942, 946-47 (Fed. Cir.
1997); see also MPEP § 2181(II).
Appellants contend that the Specification makes it clear that the
structure is “a computer or computer module”. (Request A-6). Appellants
further contend that the ordinarily skilled artisan would recognize that the
structure that must perform the function is “(e.g., implemented by or on a
computer)”. (Request A-7). As Appellants point out, the EICRM is
electrically connected to a memory to read out information from the
memory. (Spec. 9, ll. 24-31). This implies that the EICRM must be an
electronic processor. In addition, the Specification discloses an algorithm by
which the claimed EICRM operates. The Specification discloses that the
EICRM recognizes that the ink container is exhausted by receiving an
elapsed time measured by the time measuring means; reading out numeric
information from an electronic storage means which is provided on the ink
container, setting the inkless time on the basis of the numeric information;
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Application 10/917,012

and comparing the elapsed time to the inkless time. (Spec. 5, l. 32 – Spec. 6,
l. 4 and Spec. 9, ll. 14-31). The numerical information stores inkless time
for standard inks as well as correction values to account for various
particular circumstances. (Spec. 9, l. 32 – Spec. 13, l. 6). The EICRM sets
the inkless time by adding the correction values to the inkless time for the
standard ink. (See, e.g., Spec. 10, ll. 21-24).
Upon further consideration of the above, we are persuaded that the
Specification sufficiently identifies the structure corresponding to the
claimed empty ink container recognition means as an electronic processor
programmed to perform a disclosed algorithm.3 Accordingly, we hereby
vacate the new ground of rejection of claims 7 and 9 under 35 U.S.C. § 112,
second paragraph, that was instituted in the Decision.
Claims 11 and 12--Non-enablement under 35 U.S.C. § 112, First Paragraph
Appellants contend that we have made errors of law in rejecting
claims 11 and 12 as being unduly broad under 35 U.S.C. § 112, first
paragraph, in view of the precedent set forth in In re Hyatt, 708 F.2d 712
(Fed. Cir. 1983). Appellants contend that claim 11 is not a “single means”
claim, and that, by statute (35 U.S.C. § 112, sixth paragraph), the means-
plus-function clause in claim 11 may not be construed as covering any
conceivable means for achieving the stated result. (Request A-8 to A-9).4

3 Our decision is limited to the EICRM and functions expressly set forth in
claim 7, and is not intended to address the adequacy of disclosure of other
possible embodiments of an EICRM that would operate in a system in which
the inkless time is recorded as a bar code, letter or symbol, mentioned at
page 13 of the Specification as alternative approaches to recording the
inkless time.
4 Although we conclude that “Appellants have used the term ‘means’ to
invoke § 112, sixth paragraph” (Decision 6), we do not conclude that
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Application 10/917,012

Appellants assert that claim 11 recites a combination that includes
“‛an ink container . . . comprising storage means [which is provided on the
ink container’] which stores the numeric information for setting an inkless
time corresponding to the time corresponding to the kind of ink therein”.
(Request A-8). Appellants contend that the means recitation appears in
combination with another recited element, presumably an ink container.
(Id.).
Claim 11, when read in accordance with the precepts of English
grammar (see In re Hyatt, 708 F.2d at 714), calls for an ink container
comprising5 the storage means. This means, both in plain language and in
long-accepted claim construction principles, that the ink container includes
the storage means, and not that the ink container is another element recited
along with the means recitation. In this respect, the claim is no different
from the claim in Hyatt, which recited a Fourier transform processor
comprising incremental means for incrementally generating the Fourier
transformed incremental output signals. The Federal Circuit rejected the
argument that the claim recited several elements, notably a Fourier transform
processor (comparable to the claimed ink container), in combination with the
means element, when the former, as here, was recited as comprising the
latter. In re Hyatt, 708 F.2d at 714.
Appellants’ use of the term “means” succeeded in bring claim 11 within the
protections of that statutory section.

5 comprise: 1. to include or contain. Dictionary.com Unabridged,
Based on the Random House Dictionary, © Random House, Inc. 2010
(accessed at http://dictionary.reference.com/browse/comprise on November
11, 2010)
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Appellants appear to be contending that the claim language reciting a
plethora of method steps which the claimed “ink container . . . comprising
storage means” might be used in carrying out, in particular the language
reciting that “a numeric information is read out from a storage means which
is provided on the ink container to store a numeric information . . .”,
evidences that the storage means is recited in combination with another
element. We are not persuaded that this language removes claim 11 from
the realm of being a “single means” claim.
Claim 11 is, at its essence, a device or apparatus claim. Apparatus
claims cover what a device is, not what a device does. Hewlett-Packard Co.
v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
The inclusion of a lengthy recitation of the method that the device will
be used in provides no positive limitations on the claims. Appellants
recognize as much, in that they do not argue that such elements as an “ink
fountain” and a “printing drum”, for example, that appear in method portion
of claim 11 are elements that are recited in combination with the storage
means. That the method recitation identifies a storage means provided on
the ink container, as though they might possibly be two separate elements, is
inconsistent with the device portion of the claim that requires that the
storage means is a component of (and the only recited component of) the ink
container. As such, the presence of that language gives rise to an informality
that would need to be remedied, should the instant rejection be otherwise
overcome by appropriate amendment of the claim to include more than the
single means currently recited.
Moreover, if Appellants’ argument were accepted, claim 11 would
be interpreted as including an ink container and a storage means as separate
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Application 10/917,012

elements recited in a combination, while at the same time the storage means
is a part of the ink container element. Such an interpretation defies
commonly and widely accepted claim construction principles. With claim
11 being directed to a device, i.e., an ink container, we look to see what
elements are recited as being included in that device, and find only a storage
means.
Appellants’ contention that legal error exists in our position that claim
11, being a single means claim, results in the means-plus-function clause
being construed as covering any conceivable means for achieving the
stated result, misses the mark. Appellants contend that the decision in re
Donaldson, 16 F.3d 1189 (Fed. Cir. 1994), requires us, by application
of 35 U.S.C. § 112, sixth paragraph, to apply a “broadest reasonable
construction” that limits the clause to the corresponding structure, material,
or acts described in the specifications and equivalents thereof. (See
35 U.S.C. § 112, para. 6).
The sixth paragraph is applicable, by its own terms, to claims “for a
combination”. (Id.). A fortiori, it is not applicable to claims that recite only
a single means, such as claim 11. The Federal Circuit in the Hyatt case
foreshadowed what might have resulted in a possible conflict between that
decision and the Donaldson decision handed down years later, noting that:
[t]he final paragraph of §112 saves combination
claims drafted using means-plus-function format
from this problem by providing a construction of
that format narrow enough to avoid the problem of
undue breadth as forbidden by the first paragraph.
But no provision saves a claim drafted in means-
plus-function format which is not drawn to a
combination, i.e., a single means claim.
In re Hyatt, 708 F.2d at 715.
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Application 10/917,012

Appellants are only entitled to avail themselves of the constricts of
claim construction emanating from the sixth paragraph of 35 U.S.C. § 112 if
claim 11 is determined to be a combination claim. We have concluded that
it is not.
DECISION
We have carefully reviewed Appellants’ Request for Rehearing. We
have granted the Request to the extent that Appellants’ arguments have been
considered, and to the extent that we vacate the rejection of claims 7 and 9
under 35 U.S.C. §112, second paragraph. The Request is denied with
respect to making any changes in the decision to enter the new ground of
rejection directed to claims 11 and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

REQUEST GRANTED-IN-PART, DENIED-IN-PART
JRG

MATTHEW K. RYAN
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE
NEW YORK, NEW YORK 10151
9