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A flowchart alone is an insufficient structure to define a computer-implemented means-plus-function claim limitation under 35 U.S.C. § 112, ¶ 2, according to the Federal Circuit. It is advisable to include figures and a corresponding discussion demonstrating the components of a computer that may be used to carry out the steps of a process that is claimed in means-plus-function format.
Mitsui Bussan Logistics, Inc. (“Mitsui”) is the assignee of U.S. Patent Application No. 10/898,505 (the “’505 Application”) directed to a “System and Method for Distribution Chain Management.” During prosecution, the Examiner rejected the claims in the ’505 Application as anticipated by U.S. Patent Application Publication No. 2001/0034673 to Yang et al. (“Yang”). Mitsui appealed this rejection to the Board of Patent Appeals and Interferences (the “Board”), which affirmed the Examiner’s rejection. Mitsui then appealed the Board’s ruling to the U.S. Court of Appeals for the Federal Circuit.
Independent claims 11 and 21 were pending upon appeal. Independent claim 11 recited (with the disputed limitation italicized):
11. A system for supply chain management comprising:
an order controller system including reverse logistics means for generating transfer data; and a warehouse system receiving the transfer data and generating shipping data.
Claim 21 similarly contained the limitation “reverse logistics means for . . . generating transfer data.”
Importantly, the Examiner construed the “reverse logistics means for generating transfer data” limitation as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6. Under § 112, ¶ 6, the scope of protection afforded to a means-plus-function limitation is limited to the specific structure(s) disclosed in the specification and equivalents thereof.1 Accordingly, the first issue that the Federal Circuit addressed was whether the Board correctly identified the structure in the specification corresponding to the “reverse logistics means for generating transfer data” limitation.
The court began this analysis by noting that “structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.”2 In determining that the Board erred by identifying structure that was not clearly linked or associated by the specification or prosecution history with the function actually recited in the claim (i.e., “generating transfer data”), the court noted that Figure 8 and the corresponding discussion within the specification reflected the only portion of the specification linked to the function at issue. The flowchart of Figure 8 is shown below.
Having settled on the correct structure corresponding to the limitation at issue, the Federal Circuit turned to whether the identified structure was sufficient to satisfy § 112, ¶ 6. Specifically, the Court addressed the issue of whether the particular flowchart of Figure 8 and the accompanying description in the specification provided adequate structure to satisfy § 112, ¶ 6. As to this issue, the Federal Circuit agreed with the Board’s determination that Figure 8 failed to describe how a computer could be programmed to produce the structure that provides the results described in the boxes. Thus, the lack of discussion within the specification as to how a computer could actually perform the steps depicted in Figure 8 appears to have been fatal for claims 11 and 21.
Having determined that the “reverse logistics means for generating transfer data” limitation of claims 11 and 21 lacked sufficient disclosure of structure under § 112, ¶ 6, the Court held these claims to be unpatentable as indefinite under 35 U.S.C. § 112, ¶ 2. That is, the Court concluded that claims 11 and 21 were unpatentable, not for being anticipated by Yang as determined by the Board, but rather due to their indefiniteness.3
Practice Tip:
While means-plus-function limitations may serve as a valuable tool for broadly defining computer-implemented processes (e.g., software), it is crucial that the specification describe adequate structure to define these limitations. Specifically, it is advisable to include figures and a corresponding discussion demonstrating the components of a computer that may be used to carry out the steps of a process that is claimed in means-plus-function format. Proceeding in this manner will strengthen the claims against any attacks under 35 U.S.C. § 112, ¶ 2 and/or 35 U.S.C. § 112, ¶ 6. Vedder Price patent attorneys can assist in preparing patent applications directed to computer-implemented processes that will survive patentability challenges under 35 U.S.C. § 112, ¶ 2 and/or 35 U.S.C. § 112, ¶ 6.
135 U.S.C. § 112, ¶ 6 (a claim limitation expressed in means-plus-function language “shall be construed to cover the corresponding structure described in the specification and equivalents thereof”).
2Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
3See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“If a claim is indefinite, the claim, by definition, cannot be construed . . . [and] [w]ithout a discernable claim construction, an anticipation analysis cannot be performed.”).
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