We will be discussing the immediately effective provisions of the recently enacted America Invents Act and the adequacy of flowchart disclosure for means plus function terms in our weekly SoCal IP Institute meeting on Monday, September 19, 2011. Brief synopses are presented below.
The America Invents Act, (Signed September 16, 2011) (attached). We will be discussing the immediately effective provisions of the America Invents Act. These include changes to the statute as it relates to:
The Priority Application Procedure
The New Micro Entity Status
Each of these changes take effect either immediately or within the next few weeks. We will discuss the effect these changes will have on prosecution practice for our clients.
In re Aoyoma, Case No. 2010-1552 (Fed. Cir. August 29, 2011 (attached). This is an appeal directly to the Federal Circuit from a rejection of claims 11 and 21 of U.S. Patent Application No. 10/798,505 (published as U.S. Patent Publ. No. 2001/0034673). The Board of Patent Appeals and Interferences affirmed the Examiner’s rejection of these claims as indefinite. The rejection centered on the claim limitation “reverse logistics means” which the Examiner rejected and the board affirmed as “any working computer” implementing the method shown in FIG. 8 and paragraphs - of the published application.
The Board searched the specification and found that the reverse logistics means was associated with FIG. 8. They found that FIG. 8 lacked sufficient structure, but looked to the structure associated with generating “shipping data.” This structure was effectively any computer. As a result, the claim was rejected as indefinite. The Federal Circuit found that this association was not supported by the specification and that it was improper. The Federal Circuit then looked to the sufficiency of the disclosure of the “reverse logistics means” and found that the disclosure in the flowchart of FIG. 8 was insufficient. As a result, the claims were invalid as indefinite. The Federal Circuit affirmed on this alternative ground. While the Federal Circuit stops short of asserting that every flowchart is insufficient to define sufficient structure to support a means plus function limitation, the decision suggests that structure should be disclosed in the specification and a structural figure or that any flowchart should make clear the structures, algorithmic or physical, necessary to define any means plus function limitations.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 19, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.