Patently-O Bits and Bytes: Queries from Readers

  • Query 1: A means-plus-function claim is limited to corresponding structures found in the specification as well as their equivalents. In litigation, is the process of identifying corresponding structures merely claim construction that is reviewed de novo on appeal?
  • Query 2: In the original application, applicant received a restriction requirement and withdrew the apparatus claims without filing divisional. Now, in the reissue application (filed within two years of issuance), the applicant wants to add new apparatus claims (that are different from the original claims), but the examiner argues that by failing to file a divisional, applicant surrendered rights to all potential apparatus claims. This appears to be an expansion of Orita, 550 F.2d 1277 (CCPA 1977), but is it proper? See MPEP 1412.01. Doyle, 293 F.3d 1355 (Fed. Cir. 2002) involved a similar situation where the patentee requested a reissue to add claims that were similar (but broader) than the original non-elected group. However the Doyle decision does not specifically decide this issue. Doyle does indicate that the “so-called Orita doctrine therefore precludes a reissue applicant from obtaining substantially identical claims to those of nonelected groups identified in an examiner’s restriction requirement.”

75 thoughts on “Patently-O Bits and Bytes: Queries from Readers

  1. “A means-plus-function claim is limited to corresponding structures found in the specification as well as their equivalents that came into existence after the application was filed, but not to equivalents that existed at the time the application was filed but were not specifically disclosed in the application specification.”

    @broje

    Where did you get this??? I think that is flat wrong.
    See Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099-1100 (Fed. Cir. 2008)(an equivalent structure under § 112 ¶ 6 “must have been available at the time of the issuance of the claim,” whereas the doctrine of equivalents can capture after-arising “technology developed after the issuance of the patent.”)

  2. I also saw some online articles touting the ability of applicants to decide not to claim priority from the grandparent because they want a longer patent term. The only way to do that is to claim priority from the parent, without identifying the grandparent.

    I’m guessing it was more of an option before we had 18 month publication, and especially back when the term tolled from the date of issuance, rather than filing. Can you say “submarine patent?”

    But even today, with the ability to request non-publication, there might be a circumstance in which claiming priority only from the parent might be desirable, especially if the grandparent is abandoned and never published.

  3. the application must still claim the benefit of the application for which benefit is desired

    Ned, do you mean “of which benefit is desired”?

    I think I see where anon is confused.

    You have an effective date of the grandparent

    You have an effective date and an actual date of the parent (the effective date of the parent is the effective date of the grandparent).

    You have an actual date of the child. You want the effective date of the child to be the effective date of the grandparent, but you have only asked for the effective date of the parent.

    Most normal people would believe that since the effective date of the parent is the effective date of the grandparent, that the normal rules of math equivalency would make this a non-issue.

    lol – child, this iz the patent world, where plain language means naught. When you add a chain to the link, you are required to show the entire chain. Perhaps a bit overly formalisitic, but we are very careful here to place the priority on form, as opposed to some crazy idea like substance.

  4. Well, it seems to me that Section 120 expressly requires if one wants to obtain the benefit of the grandparent, the “first application,” that is no longer pending, one can do so through an intermediate application still pending that has the benefit of the first application; with this proviso:

    the application must still claim the benefit of the application for which benefit is desired. It is NOT ENOUGH to claim benefit of the intermediary application without more.

    Twist:

    Assume non provisional patent application is filed claiming priority to a provisional that also forms the basis of a priority claim in a simultaneously filed PCT. The non provisional is filed with a request for non publication. Before the proceedings are terminated in the non provisional, a continuation is filed. All benefit claims have their proper form.

    Is the benefit claim in the continuation to the provisional proper?

  5. broje,

    Both cites are interesting, but distinguishable.

    Sticker is distinguished as the second in the chain only covered apparatus (after being divided) and the chain between first and second was a CIP (not a continuation). Hovlid is distinguished as SJ granted due to absence of issue of material fact and the issue then was one of law, not fact. The issue of law being an improper 102 holding based on the law point being discussed here.

    The hypo is for a straight con.

  6. Thanks, NWPA. Your praise takes the edge off of my OUTRAGE over being wrong in my earlier post.

  7. Here it is. MPEP 201.11

    C. Benefit Claims to Multiple Prior Applications
    Sometimes a pending application is one of a series of applications wherein the pending application is not copending with the first filed application but is copending with an intermediate application entitled to the benefit of the filing date of the first application. If applicant wishes that the pending application have the benefit of the filing date of the first filed application, applicant must, besides making reference to the intermediate application, also make reference to the first application. See Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968) and Hovlid v. Asari, 305 F. 2d 747, 134 USPQ 162 (9th Cir. 1962). The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications. Appropriate references must be made in each intermediate application in the chain of prior applications. If an applicant desires, for example, the following benefit claim: “this application is a continuation of Application No. C, filed —, which is a continuation of Application No. B, filed —, which claims the benefit of provisional Application No. A, filed —,” then Application No. C must have a reference to Application No. B and provisional Application No. A, and Application No. B must have a reference to provisional Application No. A.

    I bolded the citations to case law so you won’t miss them.

    As it turns out, my “procedure” that I mentioned above is not precise enough, because it does not say “is a Contionuation of …” The “claims the benefit” language is for claiming benefit from a provisional. These are some very particular requirments, and I can see why the application templates we use are worded so carefully.

  8. NWPA and broje,

    If the parent has the effective date of the grandparent, and the item in focus has the effective date of the parent, how can the item in focus not have the effective date of the grandparent?

  9. I found this notice from the USPTO Official Gazette in 2008 saying that you have to specifically name the grandparent to get the benefit:

    link to uspto.gov

    Still can’t seem to find a case.

  10. Well, NWPA, I have found a lot of people online who are saying that if you don’t have a specific referecne to the grand-parent, then you don’t get the benefit of the grandparent. As far as I can tell, they all rely on the statement in 35 USC 120 that “No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted …” No one cites a case, but the opinions seem to be very consistent that you have to establish the co-pendancy of the applications int he priority claim. There must be one out there. I’ll keep looking.

  11. >>Does that help at all?

    It does help. I have an issued patent where they didn’t name the earlier filed grandparent, but only the parent. The examiner gave the application the effective filing date of the grandparent. I am just surprized that there isn’t a case squarely on point that either that is good enough or it is not.

  12. Or, on second thought, maybe “during the pendancy of the application as required by the director” is referrign to the new applicaiton, meaning that the Director gets to set the deadline for when the claim for priority has to be put in the specification.

    In that case, I guess it depends on whether “the earlier application” is deemed to be “the first application” or “an application similarly entitled to the benefit of the filing date of the first application.” What seems clear is that you do not have to name them all; you only have to name “the earlier application.” It is also clear which one the Patent Office thinks you need to name.

  13. NWPA,

    The MPEP says at 706.02 Rejection on Prior Art [R-6]

    VI. < DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION
    The effective filing date of a U.S. application may be determined as follows:

    (A) If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120 and 365(c), respectively, have been satisfied, the effective filing date is the same as the earliest filing date in the line of continuation or divisional applications.

    The procedure I learned, and that the USPTO always deems sufficient, is that the claim for priority say something along the lines of “This application claims the benefit of US patent app no XX/XXXXXX, filed on YY/YY/YY, which in turn claims the benefit of US Patent App No XX/XXXXXX, filed on YY/YY/YY, now abandoned.”

    Notice I did not explicitly state that I was claiming priority from the first one, that is already abandoned. I merely clarified that the application still pending, from which I was claiming priority, had the benefit of the earlier filing date.

    The language of 35 USC 120 makes it clear, in my opinion, that the earlier application from which you are claiming priority must still be pending, and that the effect of that claim of priority is that you gain the benefit of the earlier application’s PRIORITY DATE, not its FILING DATE. Let’s look at the statute.

    35 U.S.C. 120 Benefit of earlier filing date in the United States.
    An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time DURING THE PENDANCY OF THE APPLICATION as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

    The statute contains a number of terms I’ve bolded, including “application previously filed,” “the previously filed application,” “the prior application,” “the first application,” and
    “the earlier application.”

    What is controlling, to me, in interpreting the requirement for naming “the earlier application” is the requirement that “the earlier application” still be pending at the time the new application is filed, as I’ve highlighted in capital letters above. So, I think it clear that the requirement is that you only have to name the last application in the chain of priority, and we only indicate that it has the benefit of an earlier filing date than its own filing date in order to avoid confusion, and for the convenience of the Examiner and anyone else reading the patent. It should not matter whether the first application is mentioned at all in the claim of priority.

    I am not aware of any particular case addressing this issue, but I’d be extremely surprised and outraged to find a different outcome.

    Does that help at all?

  14. NAL, where do you join the substantive conversations?

    Anon,

    Not completely. I am still looking for a case or MPEP section that squarely says that if App C did not claim both App A and App B (App B being a continuation of App A) then App C only gets the filing date of App B and not App A.

    (And actually this is an issued patent.)

  15. ping,

    I cannot believe that NAL does not run with this and lump IANAE in with Malcolm.

    I am sorry to disappoint you. I now have much, much better things to do with my time than try to chase INANE back to the actual topics at hand or continuously correct him back to what I have actually said about a topic.

    INANE with his misdirections, 6 with his rope and the malcomy fingerprints of the many-headed hydra purveyor of fluff and decorum have the run of the playground. For now.

    I will save my time for penning “four page journal articles” on occasion and joining substantive conversations.

  16. the process of identifying corresponding structures

    Not to be mean, but this means that the meaning of the claim has already been construed and you are now evaluating other things “out there” that correspond with the completed construed construction.

    You have to know what you are “corresponding to” to be able to be in the act of “identifying”.

    But let’s not let this stop us from each jumping on our favorite ponies in order to catch up to the Train that has left the station and crushed the chicken on the way to the zoo with its load of bab**ns.

  17. As usual you answered your own imaginary question and not the question that was asked. THAT my friend is a gaffe.

    I cannot believe that NAL does not run with this and lump IANAE in with Malcolm.

    IANAE,

    If your favorite burr-under-the-saddle is a gaffe, then you win the award for the gaffeist poster hands down. Your artful misdirections (in truth, merely colorful re-directions), are quite rightfully legendary. You have another title to add to the trophy case: The Great Gaffer.

  18. TINLA,

    I do not believe Festo applies to MPF equivalents. However, MPF equivalency was always much more narrowly construed than DOE equivalency in the first place.

  19. If it was as obvious as you make it out to be Mooney, why would there be a Query 1 listed above?

    For that matter, if all the issues of patent law that you have glibly commented on over the years were as self-evident as you seem to suggest, why don’t we just appoint you king?

    Answer:

    1) Because no one can pry you out of your mother’s basement (and out of your red pumps) long enough; and

    2) because you don’t really have all the answers – just a lot of highly opinionated snark.

  20. What bothers me about the Chiuminatta rule is that the rule essentially requires the patent owner to prove an element not required by the statute, i.e., that the “equivalent” was known. This implies that “newness” should rather be a defense.

  21. Sorry, there’s no debate. Just a question that you didn’t answer – a gaffe.

    What color is the boathouse at Hereford, Mooney, WHAT COLOR IS THE BOATHOUSE AT HEREFORD?

    Just as I thought – a poseur.

  22. But I forgot, all that crack smoking has caused you to be unable to read simple language.

    This from the guy who thinks it’s a big unresolved debate whether figuring out what structure is covered by a claim term counts as “claim construction”.

  23. No one said that claim construction isn’t a matter of law, that wasn’t the question.

    The question posed for all to see is whether the process of identifying corresponding structure (not whether the claims read on that structure) is claim construction.

    But I forgot, all that crack smoking has caused you to be unable to read simple language. Or maybe its a little too dark in your basement.

  24. “I haven’t posted any gaffes”

    As usual you answered your own imaginary question and not the question that was asked.

    THAT my friend is a gaffe.

  25. Thanks, Ned. Is the restatement below any better then?

    A means-plus-function claim is limited to corresponding structures found in the specification as well as their equivalents, including only: (a) structural equivalents that existed at the time the application was filed; and (b) only if the claims were not amended in a narrowing manner during prosecution, functional equivalents that came into existence after the application was filed.

  26. TINLA,

    Under Chiuminatta, MPF equivalents are limited to known equivalents at the time the patent application is effectively filed. If the accused device performs the claimed function and uses a prior art means equivalent to the disclosed means, it literally infringes.

    If the infringing device is invented later, it cannot be literally covered by a MPF claim. It therefor can only be covered under the Doctrine of Equivalents.

    Now that is the law. I do not necessarily agree with it though.

    But what is very very very true is that under Chiuminatta, a claim with a MPF element cannot literally cover new structure even if is an equivalent. It can do so only under the DOE. But, as we also know, the DOE is not available (all but) if the claims were amended.

  27. Lookie here:

    You are cordially invited to attend a Patent and Trademark Office Society
    presentation:

    Chief Judge Michel
    ‘How to Revise the PTO and the Patent System’

    Tuesday, April 20, 2010
    Madison Auditorium South
    10:00 am – 11:00 am

    Chief Judge Michel is the recipient of the 2009 PTOS Federico Award, which recognizes outstanding contributions to the Patent and Trademark Systems of the United States of America.

    Paul Michel was appointed to the United States Court of Appeals for the Federal Circuit in 1988. He was elevated to Chief Judge in 2004.

    No Other Time will be given for this event.

  28. ******
    TINLA, what you have in bold is not a correct statement of the law, so it must be question the anwwer to which is no.
    ******

    So Ned, what is the correct statement of the law? Before you answer, please allow me to direct your attention to link to patentlyo.com

  29. IANAE,

    Assume there are dozens of ways of curing cancer. I invent a new one. Instead of claim it, I claim

    The cure for cancer.

    Now, is there anything at all wrong with that claim?

  30. Re. Q2: Not having Orita before me it is hard for me to address this question. However, if Doyle does accurately describe Orita, it appears that Orita does not stand for prohibiting all claims to a particular “type’ of invention, but rather only those “substantially identical to those non-elected in [the] application.”

    Moreover, if the Examiner’s contention were true, then the provisions of MPEP 1451 would have been substantially eviscerated.

  31. The Feds held he could, even though this would seemingly violate Section 112, p. 2 as the claim still would literally read on the prior art.

    Isn’t it completely backward to compare the scope of a claim to the prior art before you’ve construed the claim in accordance with the law? 112 6th isn’t even the only time you have to look to the spec to see what the claim covers. The applicant might have dabbled in lexicography to render valid a claim that would otherwise “literally” read on the prior art. I don’t see a problem with that, as long as the entire scope of the claim, properly construed, is clear of the art.

    People here keep complaining that examiners don’t read the spec before they reject the claims. Seems like you’re doing the same thing.

    the in terrorem effect of a claim that literally reads on the prior art.

    Except that it doesn’t, because you only have to read the claim to know that it’s means-plus-function and therefore isn’t as broad as it looks.

    Furthermore, it places Section 112, p.6 in conflict with Section 112, p.2

    Except that it doesn’t, because you are distinctly claiming the corresponding structure described in the specification. If that’s your invention, the claim is fine.

  32. IANAE, we all know a MPF claim is a combination claim. With respect to the means element, it can be entirely old and still the claim can be valid provided the claim as a whole defines over the prior art.

    What happened in Donaldson was this. The claim as a whole read on the prior art. Donaldson argued (Carl Moy) that he had a right to distinguish the prior art by arguing the corresponding structure. The Feds held he could, even though this would seemingly violate Section 112, p. 2 as the claim still would literally read on the prior art.

    Well, in my view, the Feds were wrong and introduced the very vice condemned by the Supreme Court in Halliburton — the in terrorem effect of a claim that literally reads on the prior art. Furthermore, it places Section 112, p.6 in conflict with Section 112, p.2 when that result was entirely unnecessary.

  33. i.e. the court in Pressure Products said that 112p6 permits structural equivalents, but it did not say that those equivalents were determined at the time of claim construction.

  34. I think Mooney and RWA are both off the mark, in a way. There’s bad usage of language all around.

    From Pressure Products, page 11:

    “Trial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation. In this case, these references provide alternatives to scoring. Although many of the disclosed alternatives may well be determined to be structural equivalents permitted by section 112, paragraph 6—a question of fact for the jury—these alternative methods of splitting or peeling cannot be treated as the disclosed structures for the removal means. Simply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references.”

    The court seems to be saying that IN THE FIRST INSTANCE, a trial court can’t look beyond the spec when trying to find corresponding structure. This FIRST INSTANCE is in fact the process of claim construction, which process implicitly INCLUDES equivalents, but does not determine precisely WHAT those equivalents are.

    Determination of equivalents is done on a case-by-case basis, in view of a particular alleged equivalent, during infringement proceedings.

    The court in Pressure Products seems to have awkwardly used the modifier “permitted by 112p6″ as a descriptor of structural equivalents–i.e. with respect to 112p6, they said no more than that it permits structural equivalents.

    They did rightly say that the determination of equivalency was a QoF for the jury.

    So Mooney, I don’t think that the holding of the decision was that “112p6 equivalents are QoF’s”, so your disagreement seems misplaced.

    And RWA, it is easy to see how you could misconstrue the Pressure Products decision.

    It is garbled, for sure, but this interpretation, which preserves claim construction as QoL and equivalency as QoF, might help reconcile things.

  35. NWPA,

    As Ned Heller likewise mentions, I did assume that your hypo did not contain any unstated flaws. As you have added a flaw, the answer still remains the same, if the desire to fix the flaw is present.

    My reference is 35 U.S.C. 120, which in part states:

    and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director.

    If, for what ever reason, the applicant would choose to shoot himself in the foot and not fix the priority chain, 35 U.S.C. 120 continues: “The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section.” In which case, waiving the benefit may create a bar of the inventor’s own work – but that would be a rather silly hypothetical, would it not?

  36. Ned,

    If the corresponding structure is not easily identified so that its identity is ambiguous

    Difficulty of identification will not lead to ambiguity.

    Different set of luggage…

  37. applicants and patent owners should not be permitted to distinguish art based on non obviousness of corresponding structure. To permit this, the claim would literally to read on the prior art.

    I don’t understand what you’re getting at here. Are you saying that a claim should be invalid if it reads on the prior art in a literal non-legal real-world grammatical sense even if it is legally novel under 112 6th?

    Because that seems to be a complete non sequitur, what with claim construction being a matter of law despite RWA’s insistence to the contrary.

  38. Thank you Jules. If possible after that decision on all the meaty stuff, I will find someone honsest in Infringement Cases. After all even my Diary was replaced, and or pages were removed. But that will be easy, with the education and the levels of each step and how they were achieved here. I can’t believe how dumb I was. And even better, I can’t believe that I can be hit so many times in the head over and over, and still have enough brain matter to catch each step as they played me for the final.
    Thank you Jules.

  39. RealWorldAhole: Just keep blabbing and defending your gaffe Mooney..

    I haven’t posted any gaffes so what is there to defend?

    The Supreme Court in Markman said claim construction was a question of law and Cyber Corp confirmed that claim construction is reviewed de novo on appeal. A means-plus-function claim is a claim. Construing a means-plus-function claim is therefore a matter of law, reviewed de novo on appeal.

    Is there a recent case that says otherwise? Quote the holding for me and also the part where they explain why they were able to overturn Markman. Otherwise I stick with my answer: construing a means-plus-function claim is an example of claim construction and is properly reviewed de novo on appeal.

    In the previous article regarding the Pressure Products case, the Federal Circuit stated that the question of what constitutes structural equivalents permitted by section 112, paragraph 6 is a question of fact for the jury.

    So, as usual Mooney, you provided the exact WRONG answer to the question that was asked.

    From the Pressure Products case, page 7:

    This court reviews claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).

    Note that it does not matter whether 112P6 equivalents are held to be “questions of fact” (a holding I disagree with, by the way). It’s still claim construction. 112P6 equivalents are not DOE equivalents, per the Supreme Court (Warner-Jenkinson, IIRC).

  40. Since Query 2 is about reissues (specifically, the “recapture” rule) this is to recommend a blog site specifically dedicated to reissue law and practice along with reexaminations and other post-issuance PTO activities. It is the “Patents Post Grant Blog” by Stephen G. Kunin W. Todd Baker and Scott A. McKeown of the Oblon firm at: link to patentspostgrant.com

  41. JD: where is your update from the BPAI conference today? I know you were up in there foulin’ up ma house. Did you hear Kappos promise accelerated exam for $$$? Make your chekx out to me.

  42. Since no one has answered my hypo or my question about Donaldson, let me explain the right answer:

    One should assume that when construing means plus function clauses that all corresponding structure is old, not only the disclosed structure, but equivalent structure. The novelty can and should lie only in the combination of the means element with other elements.

    With this understanding, applicants and patent owners should not be permitted to distinguish art based on non obviousness of corresponding structure. To permit this, the claim would literally to read on the prior art.

    To prove infringement, one would still have to demonstrate the accused apparatus or process performed the function, and also prove that the corresponding structure in the accused device was the equivalent of the disclosed structure as commanded by the statute.

    Now, if the corresponding structure was novel, it should be separately claimed in terms of structure, either in other independent claims or in dependent claims.

    Now, from the above, we see how Donaldson should have been decided. That decision was seriously flawed and a friggin disaster. Carl Moy did a wonderful job for his client, but did serious damage to the patent system.

  43. Joe, I think that if critical structure for providing support for the claims under both Section 112, p. 1 and p. 2, is not set forth verbatim in the specification, the claim is invalid. It one thing to search early applications for the effective filing date of subject matter actually described in the specification, it is quite another to send one on a fishing expedition to find that critical support.

  44. I looked at the patent in suit and did not find any “incorporation by reference” language incorporating the disclosures of the patents that were described and that the district court relied on in interpreting the means limitations.

    What would have been the outcome if that boilerplate “All patents and publications referenced herein are hereby incorporated by reference in their entirety” had been included in the specification?

    Maybe future practice should include a similar statement and expressly further include something like “Whenever the term “means” and/or a means plus function limitation subject to interpretation under 112 6 is included in a claim issued from this application, such means is to interpreted and construed in light of corresponding structure expressly described herein and incorporated herein by reference and any equivalents thereof.” What do you all think?

  45. Was In re Donaldson wrong? Can a claim literally read on the prior art and still perform its notice function under 112, p. 2?

  46. If the corresponding structure is not easily identified so that its identity is ambiguous, not only do we have a question of fact, but we have a conclusion of law — the claims fail under Section 112, p.1 and 2.

  47. Determining corresponding structure AND equivalents under 112 6 are questions of fact.

    So you wouldn’t expect the corresponding structure to be determined in a Markman hearing, for example?

    Oook.

  48. Determining corresponding structure AND equivalents under 112 6 are questions of fact. Construing the claim term “score lines” is different than determining what the corresponding structure in the specification is.

    Just keep blabbing and defending your gaffe Mooney, it only confirms what everyone, including your mom, already knows about you…

  49. Mooney, er I mean INANE, er I mean Buffalo Bill the Sociopath, why do you even try to defend your gaffe when the question is right there for everyone to see.

    The question is there for you to see, also.

    Corresponding structure and equivalents are two completely separate things that both need to be determined. Just because the equivalents are statutory and not DOE, that doesn’t make them any less distinct from the “corresponding structure” (the term in the question, that’s right there for everyone to see) that determines the “literal” meaning of the claim.

    So, to answer your question, the part of this I don’t get is the part where you decide that “corresponding structure” means “equivalents”.

  50. “The question wasn’t about equivalents. The question was about the “literal” meaning of the claim, i.e. claim construction.”

    Mooney, er I mean INANE, er I mean Buffalo Bill the Sociopath, why do you even try to defend your gaffe when the question is right there for everyone to see.

    “In litigation, is the process of identifying corresponding structures merely claim construction that is reviewed de novo on appeal?”

    Now what part of this don’t you get?

    We’re not talking about “equivalents” in a DOE sense but in a 112, 6 MPF sense.

    The answer seems to be that “the process” of identifying structures, as in Pressure Products, is a question of fact.

  51. Question for all including Max:

    Corresponding structure includes X, Y and Z. Prior art show X. Is the claim invalid?

    Assume it is. Now, what if X is not listed as corresponding structure but is merely a known equivalent?

    Does that change the result?

  52. Night Writer, why are we asking this question? Assuming all formalities are in order, the effective filing date of C is the filing date of A. A is not prior art against C.

    TINLA, what you have in bold is not a correct statement of the law, so it must be question the anwwer to which is no.

    Have you read my history of Section 112, p. 6? It appears here and in the following posts. You might ask why I know so much about this topic — well it was I and a co-author who interviewed Rich and obtained his original notes when we wrote a law review article on the topic.

    link to patentlyo.com

  53. the Federal Circuit stated that the question of what constitutes structural equivalents permitted by section 112, paragraph 6 is a question of fact for the jury.

    The question wasn’t about equivalents. The question was about the “literal” meaning of the claim, i.e. claim construction.

  54. In the previous article regarding the Pressure Products case, the Federal Circuit stated that the question of what constitutes structural equivalents permitted by section 112, paragraph 6 is a question of fact for the jury.

    So, as usual Mooney, you provided the exact WRONG answer to the question that was asked.

  55. I think I understand what your trying to tell me y’all. But after 15 years of being yanked around, while everyone else plays soccer with my head. I will belt out in song. I DID IT MY WAY.
    I have a right to my day. And I will take it.
    After all this isn’t just what you are all trying to tell me. This is a bit more than that. 15 years? And you are trying to tell me it was a mistake!!!
    I will settle this with one of those robed men that IBP seems to think is unworthy.
    And I won’t even need counsel.
    After all I have a laundry list of you know….
    And far be it for me to keep all that out of my Case. After all it is Federal yah know!
    Thanks for my opening statement.
    I will bid you all adieu.
    I am getting off of this Train. I have made it to my destination.
    Thank you all for your support. The support I
    have been given all along. But this time the Trainwreck 101 taught me I can learn how a Lawyer works. Down and dirty fast.
    If only you walked in my Shoes. It will never be enough. Ever! But now it is a calm anger. A driven anger. One with direction and knowledge.
    A purpose driven life!

  56. “Yes. Construing a means-plus-function claim is an example of claim construction and is properly reviewed de novo on appeal.”

    Note to self, Mooney is still an “oh, I have the answer to every question – and it’s all so simple” m0r0n.

    The question was “In litigation, is the process of identifying corresponding structures…”

    In other words, does the process of identifying structures amount to claim construction or fact finding?

    If it is fact finding then, probably no, if it is claim construction then maybe yes.

    But it’s not as simple as you always try to make it out to be.

    Now go bother real practitioners in some other profession.

  57. Construing a claim is what the court does. Agreed. But the court does it after having been informed of the relevant facts.

    In fact claim construction depends on facts, but in law claim construction is a question of law.

    Don’t forget that the Federal Circuit has a very broad do-over jurisdiction in patent matters.

  58. Anon, do you have a reference for that? (assume that App C only references App B in claim for priority and only includes App B in the specification.)

  59. NWPA,

    As your hypo is for a Continuation, as opposed to a Continuation-In-Part, app C does get the priority date of app A and app A cannot be used as prior art to app C.

  60. Construing a claim is what the court does. Agreed. But the court does it after having been informed of the relevant facts.

    What “X-ing means” is or is not “equivalent” to some other “X-ing means” strikes me as a matter of fact, not law.

    Does that put me half way betwen broje and Malcolm?

  61. A means-plus-function claim is limited to corresponding structures found in the specification as well as their equivalents that came into existence after the application was filed, but not to equivalents that existed at the time the application was filed but were not specifically disclosed in the application specification.

    Fixed?

  62. Here is another question:

    A first pat app A is filed.
    A second app B is filed as a continuation of app A.
    A third app C is filed as a continuation of app B.

    Assume app A is co-pending when app B is filed, and app B is co-pending when app C is filed.)
    Does app C get the priorit date of app A or app B?
    Can app A be used as prior art to app C?

  63. A means-plus-function claim is limited to corresponding structures found in the specification as well as their equivalents. In litigation, is the process of identifying corresponding structures merely claim construction that is reviewed de novo on appeal?

    Yes. Construing a means-plus-function claim is an example of claim construction and is properly reviewed de novo on appeal.

    In the original application, applicant received a restriction requirement and withdrew the apparatus claims without filing divisional. Now, in the reissue application (filed within two years of issuance), the applicant wants to add new apparatus claims (that are different from the original claims), but the examiner argues that by failing to file a divisional, applicant surrendered rights to all potential apparatus claims. This appears to be an expansion of Orita, 550 F.2d 1277 (CCPA 1977), but is it proper?

    Per Doyle, depends on the specific facts re the original claims, the restriction requirement, and the claims sought in reissue.

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