Sanada v. Reynolds

THIS OPINION IS NOT BINDING PRECEDENT OF THE BOARD
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
KAZUO SANADA,
Junior Party,
(Patent No. 6,352,379)
v.
JAMES H. REYNOLDS, DAVID H. LEVY, and
MARK E. IRVING
Senior Party,
(Application 09/592,243)
Patent Interference No. 105,029
Before STONER, Chief Administrative Patent Judge, and BARRETT and LEE, Administrative
Patent Judges.
LEE, Administrative Patent Judge.
Decision on Response to Show Cause Order
Background
On February 11, 2003, this panel issued a show cause order against senior party Reynolds
in connection with the patentability of senior party’s application claim 7. (Paper No. 3). On
March 5, 2003, we received a response from the senior party. (Paper No. 17).
The body of the show cause order issued on February 11, 2003 (Paper No. 3), is
reproduced below, in italics, to provide context:

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1 The entirety of Reynolds’ claim 7 reads as follows:
An image processing apparatus comprising:
a heater for heating an exposed thermal film to a temperature
suitable for thermal processing of said exposed film;
a scanner for scanning said thermally processed film to create a
digital record file representative of images on said thermally
processed film; and
a destroying member for destroying said thermally processed film
after said film has been scanned.
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Introduction
At issue in this show cause order is the patentability of [senior] party
Reynolds’ claim 7. Specifically, the issue concerns interpretation of an element
recited in [senior] party’s claim 7 as “a destroying member for destroying said
thermally processed film after said film has been scanned.”1 While conferring
with the administrative patent judge with regard to declaration of this
interference, the primary examiner has informed the administrative patent judge
that the examiner:
1. Finds that in the field of developing photographic
films, the name “destroying member” does not have an established
conventional meaning that identifies some structure short of every
structure capable of destroying a photographic film;
2. Concludes that the recitation “a destroying member
for destroying said thermally processed film after said film has
been scanned.” does not set forth a means-plus-function element
under 35 U.S.C. § 112, last paragraph; and

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3. Concludes that the term “destroying member” is
purely functional and encompasses any and every means for
destroying film.
If the finding and conclusions of the examiner are correct, which we
assume they are until shown otherwise by either party, then [senior] party’s claim
7 is unpatentable. In our view, under the Supreme Court’s decision in
Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 USPQ 175 (1946),
there is a judicially created “dead zone” for claims using purely functional
language to define a structural component. An exception exists only when such
language is regarded as a means-plus-function clause under 35 U.S.C. § 112, last
paragraph and narrowly construed under the same. Given the examiner’s finding
and conclusions, claim 7 is unpatentable. In response to this show cause order,
the [senior] party may seek to demonstrate that the examiner’s underlying finding
and conclusions as noted above are erroneous.
Discussion
The sixth or last paragraph of 35 U.S.C. § 112 states:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,

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2 Halliburton was the culmination of a long line of cases dealing
with use of terms such as “means” and “mechanisms” in claims.
See, e.g., A.W. Deller, Walker on Patents, § 166, pp. 790-794
(Deller’s Edition 1937).
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material, or acts described in the specification and equivalents
thereof.
The above-quoted paragraph of 35 U.S.C. § 112, when enacted, was a statutory
response to the Supreme Court’s decision in Halliburton Oil Well Cementing Co.
v. Walker, 329 U.S. 1, 71 USPQ 175 (1946). In Halliburton,2 the Supreme Court
held invalid an apparatus claim on the ground that it used a “means-plus-
function” term which was purely functional. Such a claim was improper because
the means term with a stated function merely described a particular end result,
did not set forth any specific structure, and would encompass any and all
structures for achieving that result, including those which were not what the
applicant had invented. In Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d
1580, 1584, 39 USPQ2d 1783, 1785 (Fed. Cir. 1996), the Court of Appeals for
the Federal Circuit stated:
As this court has observed, “[t]he record is clear on why paragraph six
was enacted.” In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1849
(Fed. Cir. 1994)(in banc). In Halliburton Oil Well Cementing Co. v. Walker, 329
U.S. 1, 71 USPQ 175 (1946), the Supreme Court held invalid a claim that was
drafted in means-plus-function fashion. Congress enacted paragraph six,
originally paragraph three, to overrule that holding. In place of the Halliburton
rule, Congress adopted a compromise solution, one that had support in the pre-
Halliburton case law: Congress permitted the use of purely functional
language in claims, but it limited the breadth of such claim language by
restricting its scope to the structure disclosed in the specification and

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equivalents thereof. See Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039,
1041-42, 25 USPQ2d 1451, 1453-54 (Fed. Cir. 1993); In re Fuetterer, 319 F.2d
259, 264 n.11, 138 USPQ 217, 222 n.11 (CCPA 1963). (Emphasis added.)
As the Federal Circuit explained, the statutory solution represents only a
compromise. The so-called “Halliburton rule” against use of “purely functional
claim language” has not been completely eliminated. Rather, “purely functional
claim language” is now permissible but only under the conditions of 35 U.S.C. §
112, sixth paragraph, i.e., if its scope is limited to the corresponding structure,
material, or act disclosed in the specification and equivalents thereof. In the
absence of such limited construction, the Halliburton rule is still applicable to
prohibit the use of “purely functional” claim language to define a structural
component. Hence, any claim that includes purely functional claim language and
which, for whatever reason, is not subject to the limited construction under 35
U.S.C. § 112, sixth paragraph, falls into a “dead zone” according to the
Halliburton rule as applied by the Supreme Court in 1946 and thus is
unpatentable.
While the particular claim language involved in the Supreme Court’s
Halliburton decision uses the word “means,” the issue was claiming in a purely
functional manner, a practice condemned by pre-existing case law, and not any
particular problem associated uniquely with the word “means” as distinguished
from other purely functional words and phrases. With regard to pre-existing case
law around the time of the Supreme Court’s Halliburton decision, see In re

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Fuetterer, 319 F.2d 259, 263, 138 USPQ 217, 221 (CCPA 1963), wherein the
Court of Customs and Patent Appeals explained:
In the Fullam case [In re Fullam, 161 F.2d 247, 73 USPQ
399 (CCPA 1947)], this court stated that some claims were
properly rejected as “functional in claiming merely the desired
result well known to and sought after by workers skilled in the
art.” Claims directed merely to a “desired result” have long been
considered objectionable primarily because they cover any means
which anyone may ever discover of producing the result. See, e.g.,
O’Reilly v. Morse, 15 How. 62; Heidbrink v. McKesson, 290 F.
665. (Emphasis in original.)
In Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580, 1584, 39
USPQ2d 1783, 1786 (Fed. Cir. 1996), the Court of Appeals for the Federal
Circuit stated:
We do not mean to suggest that section 112(6) is triggered
only if the claim uses the word “means.” The Patent and
Trademark Office has rejected the argument that only the term
“means” will invoke section 112(6), see 1162 O.G. 59 n.2 (May
17, 1994), and we agree, see Raytheon Co. v. Roper Corp., 724
F.2d 951, 957, 220 USPQ 592, 597 (Fed. Cir. 1983), cert. denied,
469 U.S. 835, 105 S.Ct. 127, 83 L.Ed.2d 69 (1984) (construing
functional language introduced by “so that” to be equivalent to
“means for” claim language). (Emphasis added.)
The guideline provided by the Court of Appeals for the Federal Circuit on when
to treat a certain claim language as means-plus-function recitation under 35
U.S.C. § 112, last paragraph, is clear. Use of the word “means” creates a
presumption that § 112, sixth paragraph, applies. Personalized Media
Communications LLC v. ITC, 161 F.3d 696, 703, 48 USPQ2d 1880, 1886 (Fed.
Cir. 1998). Failure to use the word “means” creates a presumption that § 112,

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sixth paragraph, does not apply. Id., 161 F.3d at 703-704, 48 USPQ2d at 1887.
But the presumptions can be rebutted. The Federal Circuit stated:
These presumptions can be rebutted if the evidence intrinsic to the
patent and any relevant extrinsic evidence so warrants. [Footnote
omitted.] See, e.g., Cole v. Kimberley-Clark Corp., 102 F.3d at
524, 531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996) (noting that
whether § 112, ¶ 6 is invoked involves an analysis of the “patent
and the prosecution history,” and consulting a dictionary
definition of “perforation” to understand if one of skill in the art
would understand this term to connote structure). In deciding
whether either presumption has been rebutted, the focus remains
on whether the claim as properly construed recites sufficiently
definite structure to avoid the ambit of § 112, ¶ 6. [Citation
omitted.] (Emphasis added.)
Id., 161 F.3d at 704, 48 USPQ2d at 1887.
In Personalized Media Communications LLC, 161 F.3d at 704, 48
USPQ2d at 1887, the Federal Circuit found that the phrase “detector” “had a
well known meaning to those of skill in the electrical arts connotative of structure,
including a rectifier or demodulator,” is not “a generic structural term lacking a
clear meaning such as ‘means,’ ‘element,’ or ‘device,’” and is not “a coined term
lacking a clear meaning, such as ‘widget,’ or ‘ram-a-fram.’” On that basis, the
Court determined that “detector” was sufficiently structural and adding the term
“digital” in front of “detector” only further limited a sufficiently structural
feature. Consequently, 35 U.S.C. § 112, sixth paragraph, did not apply.
In Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d at 1583, 39 USPQ2d
at 1786, the Federal Circuit determined that the term “detent” or “detent

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mechanism,” as the name for structure, has a reasonably well understood
meaning in the art and therefore is sufficiently structural and not purely
functional. On that basis, it was determined that 35 U.S.C. § 112, sixth
paragraph, did not apply.
These recent opinions from the Court of Appeals for the Federal Circuit
make abundantly clear that either a particular phrase at issue itself has limiting
structure or 35 U.S.C. § 112, sixth paragraph, applies to limit the purely
functional phrase to corresponding structural embodiments disclosed in the
specification and equivalents thereof. 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. A “dead zone” exists under the Supreme Court’s Halliburton case
for claims having purely functional claim language but outside the application of
35 U.S.C. § 112, sixth paragraph.
The sixth paragraph of 35 U.S.C. § 112 has just as much application
during proceedings before the U.S. Patent and Trademark Office as it does in
district court cases for infringement matters. In re Donaldson, 16 F.3d 1189,
1194, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994) (in banc). Thus, Paragraph No.
21(b) of the Standing Order (attachment to Paper No. 1) requires each party in an
interference proceeding, within twenty-eight (28) days of the date of declaration
of this interference, to submit a separate paper containing a copy of its claims in
which:

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(b) Following each means or step for performing a specified
function are inserted in bold in braces { }, all structure, material
or acts described in the specification corresponding to that means
or step (by citation to the page(s) and line(s) of the specification
and/or figure and item number of the drawings).
[Senior] party Reynolds’ application claim 7 includes recitation not
employing the language “means” but sets forth no structural delineation of the
claimed element. Specifically, [senior] party Reynolds’ application claim 7
recites: “a destroying member for destroying said thermally processed film after
said film has been scanned.” Although applicant’s claim 11 includes a similar
recitation, claim 11 goes on to further specify that the destroying member “is a
chemical treatment which binds the film onto itself so that it cannot be unwound.”
While applicant’s claims 8, 9, and 10 each depend from claim 7, claim 8 specifies
that the destroying member “is a film shredder which shreds said film”; claim 9
specifies that the destroying member “is a high intensity illuminator”; and claim
10 specifies that the destroying member “is a chemical treatment which obscures
images on the film.” Thus, only the recitation in [senior] party’s claim 7 is
regarded as purely functional and without any structural requirement.
This show cause order concerns solely with [senior] party Reynolds’
claim 7. No other claim of the junior party nor any claim of the senior party is
subject to this show cause order. In proposing this interference the examiner has
made particular findings and claim interpretation with regard to the above-
quoted claim language of [senior] party Reynolds’ application claim 7.

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The examiner has found, in this case, that in the field of developing
photographic films there is no known or established conventional meaning for “a
destroying member” that destroys a processed film, as far as the structure of the
component is concerned. The examiner has determined that “a destroying
member,” as is recited in the [senior] party’s claims, for destroying a thermally
processed film is essentially unlimited in scope structurally and would cover any
and all devices and mechanisms which are capable of destroying he processed
film. In other words, the generic recitation of the term “member,” coupled with
the functional prefix “destroying” sets forth a purely functional claim recitation.
Yet, the examiner also determined that 35 U.S.C. § 112, sixth paragraph, does not
apply here, apparently because the recitation at issue does not use the term
“means.”
The Court of Customs and Patent Appeals has long ago indicated that a
rejection based on “functionality” of claim language has merit if the type of
functionality is not covered by the last paragraph of 35 U.S.C. § 112, and if there
exists a body of extra-statutory case law which condemns that type of
functionality. In re Fuetterer, 319 F.2d at 262-63, 138 USPQ at 221. That is the
case here based on the examiner’s finding that in this art the term “destroying
member” is not a recognized or established name for structure but simply means
anything that can destroy a photographic film, and the examiner’s conclusion that
35 U.S.C. § 112, sixth paragraph does not apply. The issue should not be

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misunderstood. It is not simply use of functional language in a claim. There is
nothing wrong with using functional claim language, where the means-plus-
function provision of 35 U.S.C. § 112 applies or where such functional language
further limits structure or composition already defined in the claim. See, e.g., In
re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971) (“[T]here is
nothing intrinsically wrong with the use of such a technique [functional
language] in drafting patent claims.”). In Swinehart, at issue was the functional
phrase “transparent to infra-red rays” which limited the claimed composition of
a solidified melt of BaF2 and CaF2 in a proportion approximately eutectic.
The problem lies, as explained above, in use of “purely functional” claim
language to provide the entire definition of a structural component and without
the application of 35 U.S.C. § 112, last paragraph. In In re Swinehart, 439 F.2d
at 213, 169 USPQ at 229, the Court of Customs and Patent Appeals indicated
that it had found no prior decision of any court which may be said to hold that
there is some ground for objecting to the use of functional claim language
“beyond what is already sanctioned by the provisions of 35 U.S.C. § 112.” The
quoted language recognizes the applicability of 35 U.S.C. § 112, sixth paragraph,
to purely functional claim terms. The CCPA’s opinion in Swinehart does not
provide a safe haven or protection for purely functional claim recitations from the
application of 35 U.S.C. § 112, last paragraph.

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For the foregoing reasons, and based on the above-noted particular
findings and claim interpretation of the primary examiner, we find that [senior]
party Reynolds’ claim 7 is unpatentable under the so-called Halliburton Rule as
was referenced by the Court of Appeals for the Federal Circuit in Greenberg v.
Ethicon Endo-Surgery Inc., 91 F.3d 1580, 1584, 39 USPQ2d 1783, 1786 (Fed.
Cir. 1996). Accordingly, it is
ORDERED that judgment of unpatentability will be entered against
[senior] party Reynolds’ application claim 7 unless, within 21 days of the date of
this order [senior] party Reynolds shows good cause why its claim 7 is not
unpatentable under the so-called “Halliburton Rule” against use of purely
functional claim language to define a structural component;
FURTHER ORDERED that [junior] party Sanada may not file a reply to
[senior] party’s response unless instructed to do so by the board at a later time;
and
FURTHER ORDERED that the [senior] party’s response to this show
cause order may
(1) seek to demonstrate that the recitation “a destroying
member for destroying said thermally processed film after said
film has been scanned” should be regarded as a means-plus-
function recitation under 35 U.S.C. § 112, sixth paragraph;

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(2) submit evidence to demonstrate that in the field of
developing photographic films, “destroying member” as a name
for a structural device actually has an established conventional
meaning that is not so broad as to encompass every structure
capable of destroying a photographic film (the evidence shall
include examples of structures that destroy photographic films but
are not covered by the term); or
(3) present a persuasive argument that there is no such
place as a judicially created “dead zone” for claims using purely
functional language to define a structural component, subject to an
exception now carved out by 35 U.S.C. § 112, sixth paragraph.
Discussion
Senior party’s response states on page 2:
In response to the show cause order dated February 20, 2003, it is
submitted that the recitation in claim 7 of “a destroying member for destroying
said thermally processed film after said film has been scanned” should be
regarded as a means-plus function recitation under 35 USC 112, sixth paragraph.
As explained on page 6 of the Show Cause Order [sic], it is recognized that failure
to use the word “means” creates a presumption that 112, sixth paragraph does not
apply but the presumption can be rebutted. It is noted that the term “a destroying
member” in claim 7 is provided within the context of functional language to
describe the feature of destroying the thermally processed film after the film has
been scanned. That is, it is submitted that the functional claim language of claim
7 with respect to “a destroying member” is permissible under the conditions of 35
USC 112, sixth paragraph and thus, Applicants are entitled to the corresponding
structure, material or acts disclosed in the specification and equivalents thereof.

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As the show cause order explained, failure to use the word “means” creates a presumption
that § 112, sixth paragraph, does not apply, but that presumption can be rebutted. We are
satisfied by senior party Reynolds’ submission that the term “a destroying member” was
provided within a functional context to describe the functional feature of destroying the film and
as such is permissible under the narrow rule of construction of 35 U.S.C. § 112, sixth paragraph.
Senior party Reynolds does not agree with the examiner’s interpretation of the term as covering
any and every structure for performing the recited function and does not challenge our position
that without the application of 35 U.S.C. § 112, sixth paragraph, to the term “a destroying
member” in claim 7, that claim would be unpatentable under the principle set forth by the
Supreme Court in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 USPQ 175
(1946).
Conclusion
For the foregoing reasons, it is
ORDERED that the claim feature in senior party Reynolds’ application claim 7 of “a
destroying member for destroying said thermally processed film after said film has been
scanned” is regarded as a means-plus-function recitation under 35 U.S.C. § 112, sixth paragraph,

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and therefore good cause has been shown by senior party Reynolds on why its claim 7 is not
unpatentable for reasons stated in the show cause order.
Bruce H. Stoner, Jr., Chief )
Administrative Patent Judge )
) BOARD OF PATENT
Lee E. Barrett ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
Jameson Lee )
Administrative Patent Judge )
Entered: 19 March 2003
Counsel for Senior Party Reynolds:
David A. Novais, Esq.
EASTMAN KODAK COMPANY
Counsel for Junior Party Sanada:
Susan Perng Pan, Esq.
SUGHRUE MION, PLLC