Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE R.E. BOWLES, R.W. WARREN AND B.M. HORTON
Appeal No. 91-2267
December 19, 1991
HEARD: August 7, 1991
Request filed June 30, 1989, Control No. 90/001,804, for the Reexamination for Patent No. 3,425,430, issued February 4, 1969, based on application Serial No. 04/051,754 filed August 24, 1960 which is a continuation-in-part of Serial No. 03/855,477 filed November 25, 1959, now abandoned. Fluid-Operated System.
William E. Jackson for appellants
Primary Examiner -- A. Michael Chambers
William F. Pate, III
This is an appeal from a final rejection of claims 36, 37, 47, 49, and 50 in Reexamination Control NO. 90/001,804, involving U.S. Patent No. 3,425,430. Claims 1 through 35, 38 through 46, 48, and 51 through 66 of the patent stand confirmed.
The disclosure of the patent undergoing reexamination relates generally to a fluid amplifier system in which amplification is reflected in the magnitude of deflection of a main fluid jet by a transversely operating source of fluid pressure. The subject matter on appeal can be further understood with reference to the appealed claims which are appended to this decision.
The reference of record relied upon as evidence of anticipation is:
Ferner (German Dem.Rep.) [FN1] 6111 July 22, 1950
The examiner has rejected claims 36, 37, 47, 49, and 50 under 35 USC § 102(b) as anticipated by the Ferner German Economic Patent. The examiner found that Ferner discloses a fluid jet nozzle 1 as a means for establishing a first fluid stream. The examiner also found that Ferner discloses (1) a moving coil 5 linked to the jet nozzle as a means for deflecting the first fluid stream and (2) a second fluid stream 3 as a means of altering the deflection of the first stream, stream 3 being produced by the flow of the first stream. The examiner is of the opinion that Ferner discloses a positive feedback in that the deflecting fluid stream 3 of Ferner deflects the fluid stream 1 in "one of said directions" (the examiner quoting from the language of claim 49, see pages 3 and 4 of the Examiner's Answer).
As an initial matter, we note that at oral hearing appellants confirmed that the grouping of claims found on page 3 of appellants' Brief is in error. More specifically, claims 36, 37, and 47 are considered separately patentable. In this appeal claims 49 and 50 stand or fall with claim 36.
We have before us the interpretation of "means plus function" limitations in claims of an expired patent undergoing reexamination. We have previously held
that in reexaminations proceedings in which the PTO is considering the patentability of claims of an expired patent which are not subject to amendment, a policy of liberal claim construction may properly and should be applied. Such a policy favors a construction of a patent claim that will render it valid, i.e., a narrow construction, over a broad construction that would render it invalid. Ex parte Papst-Motoren, 1 U.S.P.Q.2d 1655, 1656 (Bd.Pat.App. & Int.1986).
*2 Compare ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 221 USPQ 929 (Fed.Cir.1984) and Lewar Marine Inc. v. Barient Inc., 827 F.2d 744, 3 U.S.P.Q.2d 1766 (Fed.Cir.1987).
It must be kept in mind that it also has been held improper for inferential limitations to be added to a claim. See Ex parte Papst-Motoren, supra, citing In re Priest, 582 F.2d 33, 199 USPQ 11 (CCPA 1978). As the Federal Circuit stated in E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 U.S.P.Q.2d 1129, 1131 (Fed.Cir.1988), cert. denied, 109 S.Ct. 542 (1988):
It is entirely proper to use the specification to interpret what the Patentee meant by a word or phrase in the claim. But this is not to be confused with adding an extraneous limitation appearing in the specification, which is improper. By "extraneous," we mean a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by a particular words or phrases in the claim. Where a specification does not require a limitation, that limitation should not be read from the specification into the claims. [citations omitted]
Furthermore, the Federal Circuit made it clear in du Pont that any perception that claims are to be saved from invalidity by reading extraneous limitations into them, is an approach that is consistently negated by the court. See also Sjolund v. Musland, 847 F.2d 1573, 6 U.S.P.Q.2d 2020 (Fed.Cir.1988).
Therefore, in the instant case, while we have made every effort to liberally interpret the claims in light of the specification, it would be error on our part to infer or read into these claims any limitations from the specification.
The second principal argument of appellants is that their "means plus function" limitations in the claims on appeal must as a matter of law be interpreted to be the corresponding structure, materials, or acts described in the specification and equivalents thereof. Appellants cite 35 USC § 112, sixth paragraph, and the Federal Circuit decision in In re Bond, 910 F.2d 831, 15 U.S.P.Q.2d 1566 (Fed.Cir.1990).
In In re Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957), the predecessor to our reviewing court squarely rejected the argument that claims reciting a means for performing a specified function must "be held to include the limitations which comprise said means and which are set forth in the disclosure. Id. at 547, 113 USPQ at 533. Instead, it held that "[t]he requirement in the second paragraph of § 112 that 'the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention' has not been at all diminished by the addition of the third [now 6th] paragraph". The CCPA then concluded "therefore, that, notwithstanding the third paragraph of section 112, it is the language itself of the claims which must particularly point out and distinctly claim the subject matter which the applicant regards as his invention, without limitations imported from the specification, whether such language is couched in terms of a means plus function or consists of a detailed recitation of the inventive matter." Id. at 548, 113 USPQ at 534.
*3 At this time we are unable to reconcile the holding of Lundberg with that of Bond. We merely point out to appellants that Lundberg is regarded as binding precedent by our reviewing court, South Corp. v. United States, 690 F.2d 1368, 215 USPQ 657 (Fed.Cir.1982). If a conflict exists between Lundberg and the panel decision in Bond, the earlier Lundberg decision is binding. See Johnston v. Ivac. Corp., 885 F.2d 1574, 12 U.S.P.Q.2d 1382 (Fed.Cir.1989); Newell Companies Inc. v. Kenney Manufacturing Co., 864 F.2d 757, 9 U.S.P.Q.2d 1417 (Fed.Cir.1988). [FN2]
Turning to a specific analysis of the claims on appeal, we have interpreted the claims in light of the specification so as to protect the inventive concept or the inventor's contribution to the art, but we decline to read limitations into the claim from the specification or to reverse a rejection of a claim that is anticipated by the prior art. In fact, appellants' arguments on appeal are based on a wholesale reconstruction of the claims by importing limitations into the claims from the specification. Such a course of action is warned against in Papst-Motoren and is specifically barred by E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., supra. Taking claim 37 as an example and with imported limitations in italics, appellants would have us read into the claim preamble that the fluid operated system is a pure fluid system, that is, one with no moving parts. Respecting the claimed means for performing the function of establishing a first fluid stream, appellants would have us read into the claim that the means must be a fixed nozzle which issues a power stream. Respecting the means for performing the function of deflecting the stream, appellants would have us import from the specification limitations that this function must be performed by means which can only be a nozzle, but more than that, a fixed nozzle which issues a stream directly against the power stream flow. Finally, for the means of altering the deflection of said stream, appellants would have us read this deflection of said stream, appellants would have us read this limitation as another nozzle directing a control stream directly against the power stream.
As can be seen from an analysis of appellants' arguments respecting claim 37, these arguments do not depend on interpreting questioned terms in light of the specification, but do, in fact, depend on the prohibited reading of limitations from the specification into the claim. With respect to appellants' arguments that as a matter of law, we must read into the means limitations in the claims on appeal the elements described in the specification and equivalents thereof, as noted above, we are bound to follow what we regard as the applicable Federal Circuit precedent on this issue. In this regard, we merely note that the apparatus described by Ferner is clearly capable of performing the functions recited in appealed claims 37 and 47, and that therefore these claims read on the disclosure of the Ferner Economic patent. We are in full agreement with the examiner's finding that claims 37 and 47 lack novelty over Ferner.
*4 We have carefully reviewed the declaration from appellants' expert Dr. Drzewiecki. However, since the declaration relates to claim interpretation and whether the components of Ferner are functionally equivalent, the declaration is inapposite.
CLAIMS 36, 49 AND 50--POSITIVE FEEDBACK
Following the holding of Papst Motoren, we have not given the term "positive feedback" its broadest reasonable interpretation as the examiner appears to have done. Instead, we have turned to appellants' specification for an interpretation of the meaning of the term. Appellants' specification describes both positive and negative feedback with positive feedback being discussed especially in columns 5 and 6.
We are in agreement with appellants' arguments that under appellants' definition of positive feedback, Ferner does not function with positive feedback as recited in claim 49 or deflect the power stream in the "same sense", i.e., the positive feedback sense, as recited in claims 36 and 50. As Ferner clearly states on the first full page of the translation "the invention avoids these problems by utilizing some of the auxiliary power which is transferred from a movable control element, preferably from a free-jet breaker, to a collecting jet and is then used to return the pilot to its original position." This passage makes clear that the free-jet 3 of Ferner functions in a negative feedback mode. That is, jet 3 tends to move the power jet 1 in the opposite sense of the deflecting coil 5. For this reason, it is our view that claims 36, 49, and 50 are not anticipated by the Ferner reference.
Appellant has presented a substantial amount of evidence adduced to show that the invention on appeal has garnered significant commercial success. Appellants have cited Smith v. Snow, 294 U.S. 1, 24 USPQ 26 (1935). This decision states in part:
[i]f the matter were doubtful, it is plain from what has been said that the character of the patent and its commercial and practical success are such as to entitle the inventor to broad claims and to a liberal construction of those which he has made (citations omitted). In such circumstances, if the claims were fairly susceptible of two constructions, that should be adopted which will secure to the patentee his actual invention, rather than to adopt a construction fatal to the grant (citations omitted).
In this instance, we must point out to appellants that their arguments on appeal are based not on a circumstance where there is questioned terminology in the claim or that the claim is susceptible to two constructions. Rather, in this instance, appellants seeks to have the claim reconstructed by the importation into the claimed subject matter of significant structural limitations from the specification. Since Smith v. Snow does not support the reading of limitations from the specifications into the claims, appellants' evidence of commercial success, no matter how striking, is unavailing to overcome a rejection of claims 37 and 47 based on their lack of novelty. See, for example, In re Wiggins, 488 F.2d 538, 179 USPQ 421 (CCPA 1973).
*5 The Examiner's Answer is affirmed with regard to claims 37 and 47, but is reversed with respect to claims 36, 49, and 50.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
Verlin R. Pendegrass
Marion Parsons, Jr.
William F. Pate, III
FN1. Our understanding of this German Economic Patent is based on a translation of record in the reexamination file.
FN2. We are also aware of a non-precedential Federal Circuit decision in In re Boersma, No. 84-627 (Fed.Cir. May 4, 1984) (copy attached), which is discussed at length in Moy, The Interpretation of Means Expressions During Prosecution, 68 J.Pat. & T.M.Off.Soc'y. 246, 258 (1986).
36. A fluid operated system comprising means for establishing a first fluid stream, means for deflecting said stream, and means for increasing the deflection of said first stream in the same sense including a second fluid stream produced by said first fluid stream.
37. A fluid operated system comprising means for establishing a first fluid stream, means for deflecting said stream, and means for altering the deflection of said first stream including a second fluid stream produced by said first fluid stream.
47. A fluid-operated system comprising means directing a fluid stream in a predetermined direction, means operative to impart a deflection of said stream from said predetermined direction, and fluid feedback means applying a deflecting stream of fluid against said fluid stream, said fluid feedback means carrying at least a portion of said fluid stream.
49. A fluid-operated system, comprising means directing a fluid stream in a predetermined direction, positive feedback means applying a deflecting stream of fluid against said fluid stream, said positive feedback means including means for increasingly collecting said fluid when said fluid stream is increasingly deflected in one of said predetermined directions.
50. A fluid-operated system, comprising means for establishing a fluid stream, means for deflecting said stream, and means responsive to deflection of said stream to further deflect said stream in the same sense.