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.”