Means-Plus-Function Claim Lacking Corresponding Structure Rejected Aas Indefinite

This article previously appeared in Last Month at the Federal Circuit, September 2011

Judges: Newman (dissenting), Gajarsa, Linn (author)

[Appealed from Board]

In In re Aoyama, No. 10-1552 (Fed. Cir. Aug. 29, 2011), the Federal Circuit affirmed the Board's rejection of claims 11 and 21 in U.S. Patent Application No. 10/798,505 assigned to Mitsui Bussan Logistics, Inc. ("Mitsui"). Because the Board erred in construing a means-plus-function limitation of claims 11 and 21, the Court affirmed the rejection of claims 11 and 21 for failure to satisfy the definiteness requirement of 35 U.S.C. § 112, ¶ 2.

Independent claims 11 and 21 recited a "reverse logistics means for . . . generating transfer data." The examiner construed the limitation as a means-plus-function limitation and concluded that the structure corresponding to the "reverse logistics means" for transferring was a computer implemented with software. Under this construction, the examiner rejected the claims on the ground of anticipation. Mitsui appealed, contending that Figure 8 and its accompanying description disclosed the corresponding structure for the means-plus-function limitation.

The Board disagreed that Figure 8 and its accompanying description provided a structure or algorithm for generating transfer data. The Board then "scoured the specification for any implied structure that could even arguably generate transfer data." Slip op. at 4. The Board, in giving "generating transfer data" a broad construction, focused on the application's disclosure of generating shipping data. The Board concluded that the structure for generating transfer data was "open ended." Under this construction, the Board affirmed the examiner's anticipation rejection.

On appeal, the Court agreed with Mitsui and the Board that the specification and prosecution history link the claimed "means for generating transfer data" with the flowchart of Figure 8. However, after finding that Figure 8 did not disclose sufficient structure for the claim limitations, the Court rejected the Board's construction of "transfer data" to include "shipping data." 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 only portion of the specification the Court found where Mitsui described the corresponding structure was the flowchart of Figure 8.

"The Board did not...