Sanada v. Reynolds

Informative decision only: persuasive authority, not binding precedent. When a claim element uses purely functional language to define a structural component without the word "means," and the term is neither a recognized name for structure nor treated as a means-plus-function recitation under 35 U.S.C. § 112, sixth paragraph, the claim falls into the Halliburton "dead zone" and is unpatentable. The § 112, sixth paragraph, presumption that arises when "means" is absent can be rebutted, and if it is, the element is limited to the corresponding disclosed structure and equivalents and the claim is not unpatentable on this ground. No prior Board precedent is named as addressed; the Board builds on Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 USPQ 175 (1946), and treats the Halliburton rule as surviving for purely functional language outside § 112, sixth paragraph. For the party attacking patentability (here the examiner's findings, adopted by the Board in a show cause order), a purely functional term with no established structural meaning can be challenged as unpatentable under the Halliburton rule even though it lacks the word "means." For the applicant or patent owner, a term such as "destroying member" invites a show cause order, but showing that the element is a means-plus-function recitation cures the problem by limiting it to the disclosed structure and equivalents, as Reynolds did. The Board relied on Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580 (Fed. Cir. 1996), Personalized Media Communications LLC v. ITC, 161 F.3d 696 (Fed. Cir. 1998), and In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (in banc), together with In re Fuetterer, 319 F.2d 259 (CCPA 1963), and In re Swinehart, 439 F.2d 210 (CCPA 1971). LEGAL TEST OR STANDARD: Use of the word "means" creates a presumption that § 112, sixth paragraph, applies, and failure to use it creates a presumption that it does not apply. Either presumption can be rebutted by intrinsic and relevant extrinsic evidence, and the focus is whether the claim as properly construed recites sufficiently definite structure. Either the phrase itself has limiting structure or § 112, sixth paragraph, applies. Purely functional language that is neither is in the Halliburton dead zone and is unpatentable. TRIGGERING FACTS: Claim 7 recited "a destroying member for destroying said thermally processed film after said film has been scanned," with no "means." The examiner found that in the field of developing photographic films "destroying member" has no established conventional meaning short of every structure capable of destroying film. The examiner concluded that the term was purely functional and not a means-plus-function element. Dependent claims 8 to 10 and claim 11 added structure, so only claim 7 was affected. Reynolds avoided the dead zone by showing that the element should be treated as means-plus-function and did not contest the examiner's reading of the term as covering any structure. KEY QUOTE: "There is no area in between the two, where a purely functional recitation, not limited by 35 U.S.C. § 112, sixth paragraph, can survive." (Paper 21, p. 8) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The decision applies Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 USPQ 175 (1946), follows Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580 (Fed. Cir. 1996), and Personalized Media Communications LLC v. ITC, 161 F.3d 696 (Fed. Cir. 1998), and reads In re Swinehart, 439 F.2d 210 (CCPA 1971), as giving no safe haven to purely functional recitations. PRACTICE TIP: If a claim element uses a generic noun plus a functional phrase without "means," expect a show cause order and be ready to argue that it is a means-plus-function recitation under § 112, sixth paragraph, with the corresponding specification structure identified. Otherwise, show an established structural meaning with evidence, including examples of structures the term does not cover.