Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences. (Serial No. 10/798,505)
The opinion of the court was delivered by: Linn, Circuit Judge.
Before NEWMAN, GAJARSA*fn1 , and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN.
Dissenting opinion filed by Circuit Judge NEWMAN.
Mitsui Bussan Logistics, Inc. ("Mitsui") is the assignee of U.S. Patent Application No. 10/798,505 titled "System and Method for Distribution Chain Management" and appeals the affirmance by the Board of Patent Appeals and Interferences ("Board") of the examiner's rejection of claims 11 and 21 as anticipated by U.S. Patent Application Pub. 2001/0034673 to Yang et al. ("Yang"). Because the Board erred in construing the means-plus-function limitation of claims 11 and 21 and because there is no permissible construction, this court affirms the rejection of claims 11 and 21 on the alternative ground of failure to satisfy the definiteness requirement of 35 U.S.C. § 112 ¶ 2 and remands with instructions to afford Mitsui the same protections under 37 C.F.R. § 41.50(b) as it would have enjoyed had the Board made the proper rejection in the first instance.
Independent claims 11 and 21 are pending and on appeal. Claim 11 recites (disputed limitation emphasized):
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 contains the "reverse logistics means for . . . generating transfer data" limitation of claim 11.
The examiner construed the "reverse logistics means for generating
transfer data" limitation as a means-plus-function limitation. The
examiner concluded that "[t]he structure corresponding to the reverse
logistics means for transferring is a computer implemented with
software." Based on this construction, the examiner rejected claims 11
and 21 based upon the disclosure in Yang because
Yang discloses "any
working computer." On appeal to the Board, Mitsui challenged the
exam-iner's anticipation rejection by attacking the examiner's
construction of "reverse logistics means." In particular,
Mitsui contended that Figure 8, shown below, and the accompanying
description in paragraphs -- disclose the corresponding
structure for the means-plus-function limitation.
The Board disagreed. It analyzed Figure 8 and the accompanying description and instead found "[t]here is no structure or algorithm for generating transfer data disclosed in the discussion of Figure 8 at Specification paragraphs 0088-93." Ex parte Aoyama, No. 2009-6755, slip op. at 12 (B.P.A.I. Nov. 17, 2009) ("Initial Decision").Unable to find structure in Figure 8 and the accompanying description, the Board scoured the specification for any implied structure that could even arguably generate transfer data. Id. The Board, in giving "generating transfer data" a broad construction, focused on the application's disclosure of generating shipping data. The Board therefore concluded that the structure for generating transfer data was "open ended" and could be generated by order controller systems, warehouse systems, and distribution systems based upon order data, order allocation data to warehouses, inventory data, and other suitable data. Id. Under this construction, the Board affirmed the examiner's rejection of claims 11 and 21 over Yang because "[o]ne of ordinary skill knew that any inventory management system that tracked parts at various locations had to document transfers or shipments among locations." Id. at 15-16. Mitsui filed a timely appeal, and this court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
Determining whether claims are anticipated involves a two-step analysis. The first step involves construction of the claims of the patent at issue. Claim construction is a question of law reviewed de novo. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). Similarly, "[d]etermining the claimed function and the corresponding structure for a claim limitation written in means-plus-function format are both matters of claim construction . . . . present[ing] issues of law that we review de novo." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1347 (Fed. Cir. 1999) (citation omitted). The second step involves comparing the claims to the prior art. Anticipation is a question of fact reviewed for substantial evidence. In re Hyatt, 211 F.3d 1367, 1371-72 (Fed. Cir. 2000).
i. The Means-Plus-Function Limitation
Mitsui argues that the Board erred in construing the means-plus-function limitation "reverse logistics means for generating transfer data." According to Mitsui, the specification and the prosecution history clearly link the function of the reverse logistics means for generating transfer data of claims 11 and 21 to the flowchart algorithm of Figure 8. Appellant's Br. 17. Mitsui contends that by giving the terms of the means-plus-function limitation the "broadest reasonable interpretation" and ignoring the structure disclosed in Figure 8, the Board's construction failed to comply with this court's guidance in In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994), and WMS Gaming.
The United States Patent and Trademark Office ("Office") responds that the Board properly gave the means-plus-function limitation its broadest reasonable construction, consistent with Donaldson. 16 F.3d at 1194. The Office contends that because "transfer data" was not defined in the specification, the Board properly construed it in a manner consistent with its plain meaning. This definition, according to the Board, encompassed "shipping data," which is disclosed in the specification. The Office concludes that the Board properly identified the only implied structure disclosed in the specification that performs the function of generating shipping data. This structure is "a system for supply chain management that includes order controller, warehouse and distributions systems." Ex parte Aoyama, No. 2009-6755, slip op. at 5 (B.P.A.I. June 16, 2010) ("Decision on Rehearing").
"The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation." Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004) (citation omitted). "The court must construe the function of a means-plus-function limitation to include the limitations contained in the claim language, and only those limitations." Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). Here, both parties agree that the identified function of the limitation of claims 11 and 21 at issue is "generating transfer data."
"The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function." Golight, 355 F.3d at 1334. "Under this second step, 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." Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (internal citation and quotation omitted).
While claims are still to be given their "broadest reasonable interpretation" during prosecution, "the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily man- dated in paragraph six." Donaldson, 16 F.3d at 1194-95. In Donaldson, this court explained that "the [Office] may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination." Id. at 1195. Moreover, when the disclosed structure is a computer programmed to carry out an algorithm, "the disclosed structure is not the general purpose computer, but rather the ...