Applicant’s failure to request claim construction under §112, 6th paragraph may invoke waiver of such claim construction

| January 23, 2013

In re Avid Identification Systems, Inc.

January 8, 2013

Panel:  Lourie, Clevenger and Bryson.  Opinion by Lourie.  Dissent by Clevenger.


The Examiner rejected claims of a patent at issue, and the PTO board maintained the rejection finding that a means-plus function limitation was found in prior art where its broadest reasonable meaning was given.  CAFC affirmed the PTO decision, and denied the Applicants’ request for a claim construction under § 112, 6th paragraph, instead of the broadest reasonable interpretation.  CAFC reasoned that the Applicants waived that claim construction by failing to raise the issue during the procedure in the PTO.  The dissenting opinion pointed out that the claim construction according to § 112, 6th paragraph is mandatory as the statutory requirement where the claim term clearly invokes the application of § 112, 6th paragraph.

出願人はクレームが自明であるとして拒絶した特許庁審判部の判断を不服として、CAFCに控訴した。問題のクレームには、ミーンズプラスファンクション(”means for”の用語を用いた限定 )を記載がある。そのような記載があると通常、特許法112条第6パラグラフの適用があり、その機能限定は明細書に開示されている構造もしくはそれと均等な構造を記載していると限定解釈される。しかしながら、本件では、特許庁審査官および審判部は、そのミーンズプラスファンクションの限定を、一般的な構造限定のときのように合理的な範囲で最も広い意味(broadest reasonable meaning)の基準を用いて解釈した。この広い解釈に基づいてその機能限定は先行技術に記載されていると特許庁は判断した。この経緯に関してCAFCは、出願人は特許庁の手続きにおいて112条第6パラグラフの適用を自ら主張しなかったためその機会を放棄したと判断し、出願人の主張を退けた。CAFC裁判官の1人は、112条第6パラグラフの適用は制定法上の要求であり、出願人や審査官が同法に基づく限定解釈を要求しなくても先ずその解釈を採用すべきであるとの反対意見を述べた。


Avid Identification Systems, Inc. (Avid) owns Patent 5,499,017 (’017 patent”).  An ex parte reexamination was filed by a third party, and claims 1, 3–10, 12, and 16–20 of ’017 patent were rejected as anticipated or rendered obvious by prior art.  The Board affirmed.  Avid appealed to CAFC.

Claim 1 of ’017 patent:

1. An electronic identification tag comprising:

a means for permanently storing data in an unalterable fashion, said data being known as unalterable data;

a means for permanently storing data in an alterable fashion, said data being known as alterable data;

means for detecting an interrogation signal;

means for discriminating between a nonmodulated signal and a modulated interrogation signal; and

a means for communicating said unalterable data and said alterable data to an electronic identification reader upon detection of a nonmodulated signal.

Decision by the PTO:

One of the disputes between Avid and the PTO was a claim construction for “a means for permanently storing data in an unalterable fashion” in claim 1.  The specification did not provide a clear definition for the term “unalterable”.  It instead indicated “unalterable data” as “permanent”, but also as “data that never needs to be changed” and “data that usually cannot be reprogrammed”.  In light of the disclosure, the Board interpreted the terms as “data that is not readily changeable” by applying the broadest reasonable interpretation.  The Board then concluded that the claimed function read on a storage fashion disclosed in prior art, which indicated the storage of both “alterable” and “fixed” data in a memory.

On rehearing in the PTO, Avid argued that the Board’s interpretation was unreasonable, and that the claimed function was simply “permanently storing data in an unalterable fashion.”  Avid repeatedly attacked the PTO’s broadest reasonable interpretation and contended that a storing function as claimed was not disclosed in the prior art.  The PTO director also agreed with the Board’s decision and found that the application of the broadest reasonable interpretation was reasonable in light of the specification.

Decision by CAFC:

CAFC agreed with the PTO decision because there was no consistent definition of “unalterable data” in the specification and there was no error in their reliance on the broadest reasonable interpretation.

As to the application of § 112, 6th paragraph, CAFC noted that Avid waived such application “by failing to point to the Board on appeal or on rehearing its contention that the procedure for interpreting the ‘means for storing’ clause was not followed”.

Avid pointed to the fact that the Board has previously examined means-plus function language without invoking waiver.  CAFC disagreed and noted: “any technical shortcomings in the procedure for evaluating the clause at issue were not raised and were thus waived” citing Ex Parte Puneet Sharma (B.P.A.I. June 27, 2012).  CAFC further stated:

while the presumption that the use of the word “means” requires a search for structure in the application at issue, an applicant needs to specifically raise the point if it is challenging the application of § 112, ¶ 6 by the PTO.

Dissenting opinion:

In answering the question as to whether claims must always be interpreted in accordance with 35 U.S.C. § 112, 6th paragraph where there is a means-plus function limitation, Judge Clevenger noted:

35 U.S.C. § 112, our en banc decision In re Donaldson, the Manual of Patent Examining Procedure (“MPEP”), and past PTO practice are all in agreement: under § 112, ¶ 6, “the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.” In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1189) (en banc).

Judge Clevenger then stated that this case should be remanded to the PTO with instructions to apply a correct claim construction under § 112, 6th paragraph.

Judge Clevenger also pointed out (i) there are many past cases where the PTO previously performed the correct means-plus-function analysis even if the applicant or examiner have not raised that issue and (ii) the analysis under § 112, 6th paragraph is necessary to check the definiteness requirement under § 112, 2nd paragraph as the claims may become unclear if there is no corresponding structure in the specification.


The application of § 112, 6th paragraph is not automatic, as suggested in this case, even if an interpretation of a means-plus function limitation is an issue in an art rejection discussion in the PTO.  It may be safe to always add a secondary argument based on a narrower interpretation under § 112, 6th paragraph if possible, even if Applicant considers that prior art fails to disclose the function even in light of the broadest meaning.

Full Opinion

Patent At Issue

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