Ex parte Karschnia
| Decision Date | 27 September 2018 |
| Docket Number | Application 10/359,902,Appeal 2016-006472[1] |
| Parties | Ex parte ROBERT J. KARSCHNIA and MARCOS PELUSO Technology Center 3600 |
| Court | Patent Trial and Appeal Board |
Before ANTON W. FETTING, BRADLEY B. BAYAT, and ALYSSA A. FINAMORE Administrative Patent Judges.
BAYAT Administrative Patent Judge.
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 2, 5-19, 22-28, 31-35, 38, 39 and 42-66.[3] We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
"The present invention relates generally to process plants and, more particularly, to a service facility that provides remote diagnostic and maintenance services to a process plant." Spec. 1:5-7.
Claims 1, 18, 25, 33, and 38 are independent. Claim 25, reproduced below with added emphasis, is illustrative of the subject matter on appeal and recites:
App. Br. 55, Claims App'x.
The Examiner's Rejections I and II are based on a finding that various limitations in the claims invoke 35 U.S.C § 112, sixth paragraph, and the Specification fails to describe corresponding structure to satisfy the definiteness and written description requirements. See Final Act. 2-12; see also Ans. 11-16.
We are persuaded by Appellants' arguments (App. Br. 7-19; Reply Br. 2-7) that the Examiner did not overcome the presumption that 35 U.S.C. § 112, sixth paragraph, does not apply.
It is well established that the use of the term "means" triggers a rebuttable presumption that § 112, sixth paragraph, governs the construction of the claim term. Conversely, when claim language does not recite the term "means," as here, the presumption is that the limitation does not invoke § 112, sixth paragraph. However, this presumption can be overcome 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.'" Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000). The correct inquiry is whether skilled artisans, after reading the patent, would conclude that a claim limitation is so devoid of structure that the drafter constructively engaged in means-plus-function claiming. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc). "Ultimately, whether claim language invokes § 112, ¶ 6 depends on how those skilled in the art would understand the structural significance of that claim language." EnOcean GmbH v. Face Intern. Corp., 742 F.3d 955, 958 (Fed. Cir. 2014) (citations omitted). As with the term "receiver" in EnOcean, the terms "data collection unit," "analysis unit," "control unit," and "computer systems" do not recite the term "means" and, thus, presumptively connote sufficiently definite structure to those of skill in the art. EnOcean, 742 F.3d at 960. Although the term "unit" may serve as a generic placeholder and substitute for "means," the inquiry does not end there.
In Williamson, for example, the court demonstrated that the term "distributed learning control module" was recited in a format consistent with traditional means-plus-function language (i.e., by replacing "means for" with "module for" followed by a function), the term was not described in the disclosure in a way that imparted structural significance, the presence of modifiers did not provide structural significance to the term "module," and the claim did not describe how the "distributed learning control module" interacts with other components in the claimed system. See App. Br. 8-9; see also Williamson, 792 F.3d at 1350-51. We find that the Examiner's inquiry falls short, especially considering that none of the cited limitations are drafted in the same format as a traditional means-plus-function limitation, by merely replacing the term "means" with "unit" followed by the linking term "for." For instance, claim 1 recites in part, "a data collection unit located remotely from the process plant and adapted to collect process plant data associated with the process plant via a communication link, wherein the process plant includes a process plant controller and a plurality of field devices coupled to the process plant controller." App. Br. 51, Claims App'x. The rejection, for example, indicates that '"data collection unit...to collect'" is interpreted as invoking § 112, sixth paragraph, because it uses a generic placeholder without sufficient structure to achieve the function or a structural modifier, and concludes that "one of ordinary skill in the art would have recognized that these are not specific structural elements that have [sic] are unique to carry out the particular functions." Final Act. 3-4. The rejection does not adequately construe the recited claim language in light of the Specification and evaluate whether the claim describes how each limitation interacts with other recited components "in a way that might inform the structural character of the limitation in question or otherwise impart structure." Williamson, 792 F.3d at 1351. And, in response to Appellants' arguments, which are reproduced by the Examiner on pages 3-11 of the Answer, the Examiner only refers to and asserts that "rationales, and explanations were provided in the Non-Final Rejection."[4] See Ans. 11 (emphasis omitted). We have reviewed the cited Non-Final Office Action, but agree with Appellants that the Examiner has not overcome the presumption that 35 U.S.C. § 112, sixth paragraph, does not apply.
Because the Examiner's rejections under 35 U.S.C. § 112, first and second paragraphs, are premised upon the Examiner's findings that § 112, sixth paragraph, is invoked, we will not sustain those rejections. See Final Act. 6-12.
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a "new and useful process, machine, manufacture or composition of matter." 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2354 (2014) (internal quotation marks and citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S.Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If the claims are not directed to a patent-ineligible concept, e.g., to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination'" to determine whether there are additional elements that '"transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 66, 78, 79).
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