Dossel, In re, 96-1340

• Citation: 115 F.3d 942,42 USPQ2d 1881
• Decision Date: 27 May 1997
• Docket Number: No. 96-1340,96-1340
• Parties: In re Olaf H. DOSSEL and Walter H. Kullmann.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 942

115 F.3d 942

42 U.S.P.Q.2d 1881

In re Olaf H. DOSSEL and Walter H. Kullmann.

No. 96-1340.

United States Court of Appeals Federal Circuit.

May 27, 1997.

Jack D. Slobod, U.S. Philips Corporation, Tarrytown, NY, argued, for appellant. With him on the brief were Jack E. Haken and Algy Tamoshunas.

Karen A. Buchanan, Associate Solicitor, U.S. Patent and Trademark Office, Arlington, VA, argued, for appellee. With her on the brief were Nancy J. Linck, Solicitor and Albin F. Drost, Deputy Solicitor.

Before PLAGER, RADER and SCHALL, Circuit Judges.

Opinion for the court filed by Circuit Judge PLAGER. Circuit Judge RADER concurs in the result.

PLAGER, Circuit Judge.

This appeal from the U.S. Patent and Trademark Office ("PTO") is about the relationship between paragraphs 1, 2, and 6 of 35 U.S.C. § 112, and how these paragraphs bear on the analysis of means-plus-function claims contained in appellants Dossel and Kullmann's (collectively "Dossel") 07/543,600 (" '600") application for patent. The examiner, the Board of Patent Appeals and Interferences ("BPAI" or "Board"), the PTO Solicitor, representing the Commissioner, and appellants have differing views on the question.

We conclude that on the ground on which the Board rejected appellant's claims, it erred. We vacate and remand.

BACKGROUND

Section 112 p 1 states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Section 112 p 2 states:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Section 112 p 6 states:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The claimed invention relates to a device for reconstructing the spatial current distribution in a biological object, such as a patient's head or brain, within which object volume elements exhibit current distributions produced by current sources in the object. When used on a patient, the invention has the ability to measure magnetic flux density outside of the patient's head. This flux density, initially measured in analog units, is converted to digital words with the help of an analog-to-digital converter. The digital words are then fed, along with data representing volume elements on the relevant surfaces on the patient's brain, such as tumors, into what the claims refer to as either a "means for reconstructing the current distributions," or "reconstruction means for determining the current distributions." This reconstruction means, or means for reconstruction, accounts for the volume elements and correspondingly reconstructs the current distributions. The new distributions are displayed visually.

Although the Board rejected other claims contained in Dossel's application as well, only the rejection of claims 8 and 9 of the '600 application is before us on appeal. Claim 8 reads:

A device for reconstructing spatial current distributions in a biological object within which object volume elements exhibit current distributions produced by current sources in said object, it being presumed that said current sources are present on surfaces inside of the morphological structure of the object, said device comprising:

means for specifying a representation which contains the morphological structure of said object at said surfaces on which the current sources are presumed present;

means for measuring at a plurality of points outside the object the values of at least one component of the magnetic fields produced by respective ones of said current sources within the object manifesting said surfaces; and

means for reconstructing the current distributions of the volume elements which are situated on said surfaces on the basis of said measured values.

Claim 9 reads:

A device for reconstructing the spatial current distributions in a biological object having a morphological structure within which object volume elements exhibit current distributions produced by current sources in said object, it being presumed that said current sources are present on specified surfaces inside of the morphological structure of the object, said device comprising:

measuring means for determining values of magnetic flux density produced by said presumed current sources outside said object;

memory means for storing said determined flux density values means for determining the volume locations of the elements which are on said specified surfaces inside said object; and

reconstruction means for determining the current distributions at said predetermined volume locations from said stored values.

The examiner rejected claims 8 and 9 under 35 U.S.C. §§ 101 (inventions patentable) and 102(b) (conditions for patentability). Dossel appealed to the Board. In its reconsideration decision, affirming its initial decision, the Board reversed and entered a new ground of rejection under 35 U.S.C. § 112 p 2. Understanding the claims at issue to be means-plus-function claims authorized by § 112 p 6, the Board stated that the issue is "whether appellants' specification discloses any specific structure or hardware that may be regarded as being 'corresponding structure' under 35 U.S.C. § 112 p 6." Concluding that the specification lacked a disclosure of any "corresponding structure" necessary to make a determination of "equivalents" and hence a determination of the scope of the means-plus-function limitations, the Board rejected the claims at issue, citing § 112 p 2, the requirement for claims.

Dossel appeals to this court, arguing that, with regard to means-plus-function claims, no rejection can be made based on § 112 p 2 without first determining the adequacy of disclosure in the written description part of the specification under § 112 p 1. The Solicitor, agreeing with Dossel's construction of § 112 (and disagreeing with the Board's construction), argued for remand so that the Board could properly determine the adequacy of disclosure under § 112 p 1.

DISCUSSION

The Board's construction of the meaning of 35 U.S.C. § 112 is a question of law that we review independently and anew. Trent Tube Division, Crucible Materials Corp. v. Avesta Sandvik Tube AB, 975 F.2d 807, 812 (Fed.Cir.1992). Furthermore, compliance with § 112 p 2 is a question of law. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 874, 27 USPQ2d 1123, 1125 (Fed.Cir.1993). We reverse the Board's factual findings only if there is clear error. In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985).

1.

Our first task is to make clear exactly what is the issue in the case. All agree that the dispute turns on the requirements imposed by § 112 of the Patent Act. The Board, disagreeing with Dossel's view, specifically stated the issue to be whether Dossel had met the requirements of § 112 p 2. On this appeal, Dossel takes the position that, while the question to some extent does involve compliance with § 112 p 2, since the Board had not expressly found a failure to comply with the requirements of § 112 p 1, no valid basis has been stated for rejection of his claims 8 and 9. The Solicitor, seemingly supporting the Board's decision under § 112 p 2, at the same time waffles to the extent of requesting in her response brief that the case be remanded to the Board for further consideration of whether there has been compliance with § 112 p 1.

Initially, then, there seems to be considerable confusion about the meaning of and relationship between paragraphs 1, 2, and 6 of section 112. Part of that confusion may stem from changes in phraseology, intended or not, that have occurred over the years, and that are reflected from time to time both in the literature and in opinions of this court.

We begin with the term "specification," which is the title of § 112. That term appears in the first United States patent statute, the Patent Act of 1790. ¹ That Act in § 2 stated that "the grantee ... of each patent shall, at the time of granting the same, deliver to the Secretary of State a specification in writing, containing a description, accompanied with drafts or models, ... which specification shall be so particular ... as not only to distinguish the invention or discovery from other things before known ... but also to enable a workman ... skilled in the art ... to make, construct, or use the same...." A similar requirement was contained in the Patent Act of 1793, but there the term "specification" was not used; the inventor was to "deliver a written description of his invention ... in such full, clear, and exact terms, as to distinguish the same." 1 Stat. 318, § 3 (1793). Both "specification" and "written description" were used, somewhat interchangeably, in the Patent Act of 1836. ² As amended over the years, the Patent Act contained one or the other of the terms, or sometimes both.

In the current version of the Patent Act, in § 112, both terms continue to be used, but with a difference. As noted, the section is entitled "Specification." Paragraph 1 requires a written description of the invention. Paragraph 2 requires that the claims, which follow in order after the written description, shall "particularly point[ ] out and distinctly claim[ ] the subject matter." Paragraph 3 states that a claim "may be written" in independent or dependent or multiple dependent form, and paragraph 4 states what a claim in dependent form "shall contain."...