Ex Parte Vanttinen et al

Board of Patent Appeals and Interferences

Jun 17, 2009

09864017 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VEIJO VANTTINEN and HAITAO TANG
____________

Appeal 2008-005153
Application 09/864,017
Technology Center 2400
____________

Decided:1 June 18, 2009
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 27-34. Claims 1-26 are indicated to be allowable by the Examiner.
We have jurisdiction under 35 U.S.C. § 6(b).

Invention
Appellants’ claimed invention is related to a mobile station and a
packet data device being an integral part of a mobile station or being
attachable to a mobile station. (Spec. 6; Fig. 9).

Illustrative Claims
This appeal contains claims 27-34. Independent claims 27 and 33
illustrate the invention as follows:
27. A packet data device (950) being an integral part of a
mobile station or being attachable to a mobile station,
comprising
means (960) for receiving information about a location
information request and about a sender of a location
information request from a mobile station and
means (970) for exchanging with a network element connected
to a cellular network information about a security
association, which points to the network element from the
sender of the location information request.
33. A mobile station (901), comprising
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means for receiving a notification from a cellular network
about the location information request,
means for responding to the cellular network with a
notification response, and
means for notifying a packet data device, which is either an
integral part of the mobile station or attached to the
mobile station, about the location information request.

References
Jokiaho US 5,889,770 Mar. 30, 1999
Havinis US 6,671,377 B1 Dec. 30, 2003
(filed Mar. 18, 1999)
Barnes US 6,711,147 B2 Mar. 23, 2004
(filed Jun. 15, 1999)

Rejections
Claims 33-34 are rejected under 35 U.S.C. § 102(e)2 as being
anticipated by Jokiaho.
Claims 27-32 is rejected under 35 U.S.C § 103(a) as being
unpatentable over Havinis in view of Jokiaho, and further in view of Barnes.

2 Jokiaho has the published date Mar. 30, 1999 which is one year early than
the US filing date of the present application, May 23, 2001. Therefore,
claims 33-34 should/may be rejected under 35 U.S.C. § 102(b) as being
anticipated by Jokiaho.
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II. ISSUE
The issue before us is whether claims 27-34 are sufficiently definite in
claim scope so as to evaluate the patentability of the claims in view of the
cited prior art. In particular, the issue turns on whether the claims
themselves or Appellants’ Specification discloses adequate structure,
material, or acts that perform the functions recited in independent claims 33
and 27.

III. PRINCIPLES OF LAW
35 U.S.C. §112, sixth paragraph
Where means-plus-function language is used to define the
characteristics of a machine or manufacture invention, such language must
be interpreted to read on only the structures or materials disclosed in the
specification and “equivalents thereof” that correspond to the recited
function. The Federal Circuit has made clear that the USPTO is to interpret
means-plus-function language according to 35 U.S.C. §112, sixth paragraph.
In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). When a
claim uses the term "means" to describe a limitation, a presumption inheres
that the inventor used the term to invoke § 112, ¶ 6. Altiris, Inc. v. Symantec
Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). "This presumption can be
rebutted when the claim, in addition to the functional language, recites
structure sufficient to perform the claimed function in its entirety." Id.
Once a court concludes that a claim limitation is a means-plus function
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limitation, two steps of claim construction remain: 1) the court must first
identify the function of the limitation; and 2) the court must then look to the
Specification and identify the corresponding structure for that function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003). "If there is no structure in the specification
corresponding to the means-plus-function limitation in the claims, the claim
will be found invalid as indefinite." Biomedino, LLC v. Waters
Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007); see also In re
Donaldson, 16 F.3d at 1195.

35 U.S.C. §112, second paragraph
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
35 U.S.C. §112, first paragraph
In Greenberg, the Court of Appeals for the Federal Circuit stated:
In Halliburton Oil Well Cementing Co. v. Walker,
329 U.S. 1, 71 USPQ 175 (1946), the Supreme
Court held invalid a claim that was drafted in
means-plus-function fashion. Congress enacted
paragraph six, originally paragraph three, to
overrule that holding. In place of the Halliburton
rule, Congress adopted a compromise solution, one
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that had support in the pre-Halliburton case law:
Congress permitted the use of purely functional
language in claims, but it limited the breadth of
such claim language by restricting its scope to the
structure disclosed in the specification and
equivalents thereof. See Valmont Indus., Inc. v.
Reinke Mfg. Co., 983 F.2d 1039, 1041-42, 25
USPQ2d 1451, 1453-54 (Fed. Cir. 1993); In re
Fuetterer, 319 F.2d 259, 264 n.11, 138 USPQ 217,
222 n.11 (CCPA 1963). (Emphasis added.)
Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580, 1582 (Fed. Cir.
1996).
The test for enablement is whether one skilled in the art could make
and use the claimed invention from the disclosure coupled with information
known in the art without undue experimentation. See United States v.
Telectronics, Inc., 857 F.2d 778, 785, (Fed. Cir. 1988), cert. denied, 109
S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343, 1345, (CCPA 1976).
IV. FINDINGS OF FACT
The following Findings of Fact (FF) are supported by a preponderance
of the evidence.
1. Appellants used “means plus function” language in the claims 27 and
33 to define the claimed invention. (App. Br. 57 and 58, Claims Appendix).
2. Claims 27 and 33 do not recite any structure that would perform the
claimed functions such as receiving information about a location information
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request or exchanging with a network element, recited in claim 27 and
receiving a notification from a cellular network, responding to the cellular
network, or notifying a packet data device, recited in claim 33 (App. Br. 57
and 58, Claims Appendix).
3. The Summary of the Claimed Invention at page 4 of the Brief
identifies Appellants’ Specification at page 18 and Fig. 9. Appellants’
Specification describes the claimed subject matter of claim 27, which has no
structure, material or acts corresponding to the functions recited in the claim,
as follows:
A packet data device 950 is either an integral part of a mobile
station or it is a separate device which can be attached to a
mobile station. In the latter case it may be, for example, a
laptop computer or a personal organizer. The packet data device
950 has means (960) for receiving information about a location
information request and about a sender of a location
information request from the mobile station and means (970)
for exchanging with a network element connected to a cellular
network information about a security association, which points
to the network element from the sender of the location
information request.
(Spec. 18, Fig. 9).
4. The Summary of the Claimed Invention at page 4 of the Brief
identifies Appellants’ Specification at page 18. Appellants’ Specification
describes the claimed subject matter of claim 33, which has no structure,
material or acts corresponding to the functions recited in the claim, as
follows:
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The mobile station 901 has means for receiving from a cellular
network a notification about a location information request and
means for responding to the cellular network with a notification
response. It furthermore has means for notifying a device,
which is attached to the mobile station, about the location
information request.
The means for responding to the cellular network may expect
the device to give a permission, and only thereafter send a
positive response is sent to the cellular network. In other words,
the means for responding to the cellular network are initiated
by a permission sent by the device.
(Spec. 18, Fig. 9).

V. ANALYSIS
35 U.S.C §112, sixth paragraph
A presumption arises that Appellants used “means” in claims 27 and
33 to define their invention, thus, invoked 35 U.S.C § 112, sixth paragraph
(FF1). The claims themselves do not recite any structure that would perform
these claimed functions in their entirety (FF2). Hence, the presumption is
not rebutted by any structure recited in the claims. As such, the presumption
§ 112, sixth paragraph applies, and we are required to interpret the claim
limitations pursuant to Title 35, Section 112, sixth paragraph.
Furthermore, the rules of the Board require that the Appeal Brief contain:
For each independent claim involved in the appeal and for each
dependent claim argued separately under the provisions of
paragraph (c)(l)(vii) of this section, every means plus function
and step plus function as permitted by 35 U.S.C. 112, sixth
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paragraph, must be identified and the structure, material, or acts
described in the specification as corresponding to each claimed
function must be set forth with reference to the specification by
page and line number, and to the drawing, if any, by reference
character.

37 C.F.R. § 41.37(c)(l)(v).
Thus, we consult the Appellants' Summary of the Claimed Subject
Matter in the Appeal Brief to assess whether the Specification describes
structure, material, or acts corresponding to “means” recited in the claims for
performing the functions recited in claims 27 and 33.
The Appellants describe the subject matter of claims 27 and 33 in the
Appeal Brief as follows:
Claim 27 recites a packet data device (Fig. 9, Ref. No. 950)
being an integral part of a mobile station or being attachable
to a mobile station (P. 17, L. 1-4; P. 18, L. 4-5). The packet
data device comprises means (Fig. 9, Ref. No. 960) for
receiving information about a location information request and
about a sender of a location information request from a mobile
station (P. 18, L. 6-8). Means (Fig. 9, Ref. No. 970) for
exchanging with a network element connected to a cellular
network information about a security association, which points
to the network element from the sender of the location
information request (P. 18, L. 8-11).
Claim 33 recites a mobile station comprising means for
receiving a notification from a cellular network about a location
information request (p. 18, L. 27-28). Means for responding to
the cellular network with a notification response (P. 18, L. 28-
29). Means for notifying a packet data device, which is either
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an integral part of the mobile station or attached to the mobile
station, about the location information request (P. 18, L. 29-
30).
(App. Br. 4)
The cited portions of the Appellants’ Specification have substantially
the same language as that recited in independent claims 27 and 33
respectively. We find no structure, material, or acts corresponding to
“means” for performing the functions recited in claims 27 and 33 (FF3 and
FF4). Therefore, Appellants have failed to disclose any sufficient structure
for performing the functions cited in the means elements contained in claims
27 and 33 so as to render the claims definite. Hence, we are left to speculate
what structures can be used for performing the functions recited in the
claims.
While we might speculate as to what is meant by the claim language,
our uncertainty provides us with no proper basis for making the comparison
between that which is claimed and the prior art as we are obliged to do.
Rejections under 35 U.S.C. § 103 should not be based upon "considerable
speculation as to the meaning of the terms employed and assumptions as to
the scope of the claims." In re Steele, 305 F.2d 859, 862 (CCPA 1962).
When no reasonably definite meaning can be ascribed to certain terms in a
claim, the subject matter does not become obvious, but rather the claim
becomes indefinite. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Accordingly, we are constrained to reverse, pro forma, the Examiner's
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rejections of claims 27-32 under 35 U.S.C. § 103 and claims 33-34 under 35
U.S.C. § 102. We hasten to add that this is a procedural reversal rather than
one based upon the merits of and the section 103 rejection and the section
102 rejections.

VI. NEW GROUNDS OF REJECTION
We enter a new ground of rejection of claims 27-34 under 35 U.S.C.
§ 112, second paragraph, and a new ground of rejection of claims 27-34
under 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 112, second paragraph
As already noted, the means plus function language recited in claims
27 and 33 renders the claims indefinite since Appellants have identified no
structure, acts or material disclosed in either claims themselves or the
Specification to carry out the functions recited in the claims. The claimed
elements, “means” are amenable to more than one plausible claim
construction. For example, we could speculate that the “means” for
notifying a “device” of claim 33 could be a multiplexer, an USB device, or a
address bus device, etc. Appellants have provided no guidance as to what
Appellants intend the claim language to cover with respect to the means plus
function limitations.
Due to the ambiguity as to what is intended by the claimed “means”
and the fact that those claimed elements are amenable to two or more
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plausible claim constructions, we enter a new ground of rejection of claims
27-34 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter that
Appellants consider to be the invention.
35 U.S.C. § 112, first paragraph (scope of enablement)
We enter a new ground of rejection of claims 27-34 under 35 U.S.C.
§ 112, first paragraph, because the claimed functions recited in claim 27
and 33 are purely functional recitations with no structural limitations.
The so-called ‘Halliburton rule’ proscribed ‘conveniently functional
language at the exact point of novelty.’ Halliburton, 329 U.S. at 8.
More generally, Halliburton proscribed purely functional claiming
by prohibiting a patentee from using ‘broad functional claims’ to
‘obtain greater coverage by failing to describe his invention than by
describing it as the statute commands.’ Id. at 12-13…. ‘purely
functional claim language’ is now permissible but only under the
conditions of 35 U.S.C. § 112, sixth paragraph, i.e., if its scope is
limited to the corresponding structure, material, or act disclosed in
the specification and equivalents thereof. In the absence of such
limited construction, …any claim that includes purely functional
claim language, and which is not subject to the limited construction
under 35 U.S.C. § 112, sixth paragraph, fails to meet the
requirements of 35 U.S.C. § 112, first paragraph, according to
reasoning in Halliburton and thus is unpatentable.”

Ex parte Miyazaki, No. 2007-003300, 25-26 (BPAI Nov. 19, 2008)
(precedential).

In this case, as already noted, all the “means” limitations recited in the
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claims have neither structural recitations in the claims themselves nor have
corresponding structural descriptions in the Specification (FF2, FF3, and
FF4). “[S]uch unlimited purely functional claiming may reasonably be
construed to encompass any and all structures for performing the recited
function, including those which are not what the applicant invented.” Id. at
27. Therefore, claims 27 and 33 are unpatentable under 35 U.S.C. § 112,
first paragraph, for lack of an enabling disclosure commensurate with the
scope of the claims. Claims 28-32 depend from claim 27; and claim 34
depends from claim 33. As such, claims 28-32 and 34 are likewise
unpatentable for the same reasons.

VII. CONCLUSION
For the aforementioned reasons, we conclude that the claims
themselves or Appellants’ Specification do not disclose adequate structure,
material, or acts that perform the function recited in the elements recited in
claims 33 and 27. We reverse, pro forma, the Examiner’s prior art rejections
of claims 27-34. We further conclude that claims 27-34 are unpatentable
under 35 U.S.C. § 112, second paragraph and 35 U.S.C. § 112, first
paragraph.

VIII. DECISION
In view of the foregoing discussion, we reverse, pro forma, the
Examiner’s rejections of claims 27-34. We enter a new ground rejection of
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claims 27-34 under 35 U.S.C. § 112, second paragraph and 35 U.S.C. § 112,
first paragraph.
37 C.F.R. § 41.50(b) provides that "[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that, within two months from the date of the
decision, the appellant must exercise one of the following options to avoid
termination of proceedings of the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52
by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

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