Absence of “Means” Means §112(f) Did Not Apply

In Zeroclick, LLC v. Apple Inc., [2017-1267] (June 1, 2018) the Federal Circuit vacated and remanded the district court determination that claims of U.S. Patent Nos. 7,818,691 and 8,549,443 were invalid for indefiniteness, finding the district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus-function terms.

At issue were the limitations “program that can operate the movement of the pointer (0)” and “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation” which the district court determined were means-plus-function limitations.

To determine whether § 112, para. 6 applies to a claim limitation, the presence or absence of the word “means” is important.  The failure to use the word “means” creates a rebuttable presumption that § 112, ¶ 6 does not apply. However, this presumption
can be overcome, and § 112, ¶ 6 will apply, if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.  The essential inquiry remains whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.

The Federal Circuit noted that neither of the limitations at issue uses the word “means,” so presumptively, § 112, ¶ 6 does not apply to the limitations.  The Federal Circuit noted that while Apple argued that the limitations must be construed under § 112, ¶ 6, it provided no evidentiary support for that position, and thus the presumption against
the application of § 112, ¶ 6 to the disputed limitations remained unrebutted. The Federal Circuit found that the district court’s discussion was couched in conclusory language, relying on Apple’s arguments, contrasting them against Zeroclick’s contentions, but pointing to no record evidence that supports its ultimate conclusion that  § 112, ¶ 6 applies to the asserted claims.

The Federal Circuit said that the district court legally erred by not giving effect to the unrebutted presumption against the application of § 112, ¶ 6.  The Federal Circuit noted that this was erroneous for at least three reasons: (1) the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions; (2) the court’s analysis removed the terms from their context, which otherwise strongly suggests the plain and ordinary meaning of the terms; and (3) the district court made no pertinent finding that compels the conclusion that a conventional graphical user interface program or code is used in
common parlance as substitute for “means.”  The Federal Circuit concluded that the district court thus erred by effectively treating “program” and “user interface code” as nonce words and concluding in turn that the claims recited §means-plus-function limitations.


Board Must Consider Applicant’s Reply to New Grounds in the Examiner’s Answer

In In re Durance, [2017-1486] (June 1, 2018), the Federal Circuit vacated the Board’s determination of obviousness and remand for the Board to consider applicants’
reply-brief arguments in the first instance.

Durance, Fu, and Yaghmaee filed a patent application on improved methods and
apparatuses for “microwave vacuum-drying of organic materials, such as food products and medicinal plants.  Applicants appealed a final rejection of the claims, and in her Answer, the Examiner raised a new structural identify argument to counter applicant’s argument against the rejection.  Applicants challenged the examiner’s structural-identity
rejection in its reply brief. Durance explained that the Examiner’s never-before articulated understanding of the corresponding structure from the specification was
extremely inaccurate.   The Board affirmed the rejection, disregarding Durance’s
reply-brief arguments by citing 37 C.F.R. § 41.41(b)(2) and stating that these arguments were “not responsive to an argument raised in the Answer.”  The Board denied rehearing, reiterating that it would not consider applicant’s reply-brief arguments, because applicants did not provide such a showing or indicate where a new argument requiring such a response was raised in the Examiner’s Answer.

The Federal Circuit noted that throughout the examination, the Patent Office continually
shifted its position on which structures and what characteristics of those structures are the bases for the Office’s grounds of rejection, such that the Court was “not confident” in the reasoning for the rejection.  As to the failure to consider arguments in applicants’ reply brief, the Federal Circuit noted that Section 41.41(b)(2) permits a reply brief to respond to “an argument raised in the examiner’s answer.” The Federal Circuit added that nothing in this provision bars a reply brief from addressing new arguments raised in the Examiner’s Answer that are not articulated in the Final Office Action, regardless of whether the examiner designated that new argument as a “new ground of rejection.  The Federal Circuit said:

If an examiner’s answer includes arguments raised for the first time, i.e., not in the Final Office Action, an applicant may address those arguments in the reply.

The Federal Circuit said that the equivocal nature of the examiner’s and Board’s remarks throughout the examination of the application, including whether inherency was the basis for the rejection, clouded the issues before applicants.  Accordingly, applicants had no notice, prior to the examiner’s answer, of the grounds on which his application was being rejected, and it was therefore proper under § 41.41(b)(2) for applicants to
to respond to the argument raised in the examiner’s answer.  The Federal Circuit rejected the Patent Office’s argument that applicant should have petitioned to have the
examiner’s answer designated as a new ground of rejection, finding no such requirement in the regulations.