115 F.3d 942 (Fed. Cir. 1997), 96-1340, In re Dossel
|Citation:||115 F.3d 942|
|Party Name:||42 U.S.P.Q.2d 1881 In re Olaf H. DOSSEL and Walter H. Kullmann.|
|Case Date:||May 27, 1997|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
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.
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:
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