Ex parte Spaulding

• Decision Date: 28 September 2006
• Docket Number: 276,Appeal 2006-3206,Application 09/550
• Parties: Ex parte GLENN F. SPAULDING Technology Center 1600
• Court: Patent Trial and Appeal Board

Ex parte GLENN F. SPAULDING Technology Center 1600

Appeal 2006-3206

Application 09/550, 276

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 28, 2006

This Opinion is Not binding Precedent of the Board.

Before PAK, WARREN, and JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

REMAND TO THE EXAMINER

We remand the application to the examiner for consideration and explanation of issues raised by the record. 37 C.F.R §41.50(a)(1) (2006); Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed., Rev. 3, August 2005).

We initially note that in spite of two Orders entered by this Board on August 2, 2005 and March 7, 2006, the Examiner did not include the proper United States patent number for Izumi in the Supplemental Answer mailed May 22, 2006 (Supplemental Answer 3 and 7).

The record shows that Appellant submitted a substituted specification and abstract with the amendment filed August 12, 2002, making certain statements with respect to 37 C.F.R § 1.125 (2002) at page 6. The status of this document is not apparent on the record. In the final action mailed November 12, 2002, the Examiner stated "[t]he Office acknowledges receipt of the substituted specification" at page 2, which statement does not indicate whether the substitute specification complied with said rule and MPEP § 1211 (8th ed., August 2001) and has been entered in the record. Indeed, the Examiner has not stated that the document is entered (no markings to that effect are on the document) and refers to the original specification with respect to "Surmodics, Inc." (Supplemental Answer 3 and 9).

We copy appealed independent claims 1 and 10 and representative dependent claims 11, 21, and 24 as they appear in the Claims Appendix to the Brief:

1. A cytometer apparatus comprising:

a rotating means adapted to receive and rotate a transparent cylinder along a longitudinal axis of the transparent cylinder;

a light source for illuminating at least a portion of said transparent cylinder while the transparent cylinder is being rotated by the rotating means;

a detector for detecting a light signal provided by said light source and reflected from said transparent cylinder while the transparent cylinder is being rotated by the rotating means;

determining means for determining at least one cytometric characteristic of a sample disposed in said transparent cylinder based on said light signal; and a movement means for moving said transparent cylinder and said light source and detector in a longitudinal axis relative to one another.

10. A spin cytometer apparatus comprising:

a rotating means for rotating a transparent cylinder about a longitudinal axis of the transparent cylinder;

a light source for illuminating at least a portion of the transparent cylinder while the transparent cylinder is being rotated by the rotating means;

a detector means for detecting a light signal generated by the light source and reflected from the transparent cylinder while the transparent cylinder is being rotated by the rotating means;

determining means for determining at least one cytometric characteristic of a sample disposed in said transparent cylinder based on said detected light signal; and

a movement means for moving the transparent cylinder and the light source and detector means in relative motion.

11. The spin cytometer of claim 10, wherein the rotating means is adapted to sequentially rotate a transparent cylinder in two (2) directions.

21. The spin cytometer of claim 10, wherein the rotating means comprises a stepper motor.

24. The spin cytometer of claim 10, wherein the detector means further comprises an analog to digital converter.

It is readily apparent that all of the appealed claims include in substantial part elements that are stated in terms of "means," "means comprises," "means further comprises," and "means . . . adapted" coupled with a recitation of the function to be performed by such "means." The resolution of the principal issues in the grounds of rejection under 35 U.S.C §§ 102(b) and 103(a) advanced on appeal requires that the subject claim language must first be interpreted by giving the claim terms their broadest reasonable interpretation consistent with the written description provided in appellants' specification as it would be interpreted by one of ordinary skill in this art. See In re Morris, 127 F.3d 1048, 1054-55, 44 U.S.P.Q.2d 1023 1027 (Fed. Cir. 1997) (A[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification.@); In re Donaldson Co., 16 F.3d 1189, 1192-95, 29 U.S.P.Q.2d 1845, 1848-50 (Fed. Cir. 1994) (in banc) (A[T]he >broadest reasonable interpretation= that an examiner may give means-plus-function language is that statutorily mandated in [35 U.S.C. § 112, ] paragraph six."); In re Zletz, 893 F.2d 319, 321-22, 13 U.S.P.Q.2d 1320, 1322 (Fed. Cir. 1989) (ADuring patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art. See In re Prater, 415 F.2d 1393, 1404-05, 162 U.S.P.Q. 541, 550-51 (CCPA 1969).@).

In view of the "means" recitations which specify the function but do not define structure which satisfies that function in the appealed claims, the strictures of 35 U.S.C § 112, sixth paragraph, apply. See Texas Digital Systems, Inc. v. Telegenx, Inc., 308 F.3d 1193, 1208, 64 U.S.P.Q.2d 1812, 1822-23 (Fed. Cir 2002), and cases cited therein. Therefore, all of the "means" language in the appealed claims must be construed as limited to the "corresponding structure" disclosed in the written description in the specification and "equivalents" thereof. Donaldson, 16 F.3d at 1192-95, 29 U.S.P.Q.2d at 1848-50.

The "corresponding structure" is that "structure in the written description necessary to perform that function [citation omitted]," that is, "'the specification . . . clearly links or associates that structure to the function recited in the claims.' [Citation omitted.]" Texas Digital Systems, 308 F.3d at 1208, 64 U.S.P.Q.2d at 1822-23. "[A] section 112, paragraph 6 'equivalent[]' . . . [must] (1) perform the identical function and (2) be otherwise insubstantially different with respect to structure. [Citations omitted.]" Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364, 54 U.S.P.Q.2d 1308 1315-16 (Fed. Cir. 2000). "[T]wo structures may be 'equivalent' for purposes of section 112, paragraph 6 if they perform the identical function, in substantially the same way, with substantially the same result. [Citations omitted.]" Kemco Sales, 208 F.3d at 1364, 54 U.S.P.Q.2d at 1315. "[T]he 'broadest reasonable interpretation' that an examiner may give...