The U.S. Court of Appeals for the Federal Circuit affirmed a rejection of two pending application claims by the Board of Patent Appeals and Interferences (the Board), albeit on alternate grounds.  The Board upheld the examiner’s rejection of the claims based on anticipation, while the Federal Circuit found the claims to be indefinite.  In re Aoyama, Case No. 10-1552 (Fed. Cir., Aug. 29, 2011) (Linn, J.) (Newman, J. dissenting).

Mitsui Bussan Logistics, Inc. is the assignee of an application directed to a supply chain management system.   The two pending claims on appeal require “an order controller system including reverse logistics means for generating transfer data.”  The examiner found that the structure corresponding to the “means for generating transfer data” limitation was a general purpose computer with software and that the claims were anticipated.

On appeal to the Board, Mitsui argued that the corresponding structure was narrower, contending that such structure was found in the flow chart of Figure 8 and the corresponding description.  The Board, not finding corresponding structure in Figure 8 and its description, actually broadened the construction of “means for generating transfer data” to include structure for “generating shipping data.”  Based on the Board’s broadened construction, it affirmed the examiner’s rejection based on anticipation.

On appeal, the Federal Circuit addressed the Board’s claim construction.  The Court found that the Board erred in broadening the construction of “means for generating transfer data” outside of the scope of Figure 8 and its corresponding description.  The Court stated, “[t]he Board erred by identifying structure that was not clearly linked or associated by the specification or prosecution history with the function actually recited in the claims, i.e. ‘generating transfer data.’”  The only portion of the specification Mitsui contended disclosed corresponding structure was Figure 8’s flow chart and the corresponding text.

The Federal Circuit agreed with the Board that Figure 8 and its corresponding text did not disclose sufficient structure corresponding to the means-for term, and, thus, the Court found that the claims are invalid as indefinite under 35 U.S.C. §112, ¶ 2.  The Court did not foreclose an applicant’s ability to disclose corresponding structure in the form of an algorithm in a flow chart, but Figure 8 and its corresponding text merely disclosed several results to be obtained without describing how to achieve those results, i.e. without disclosing any algorithm.  Affirming the rejections on the alternate grounds, the Court remanded the case with instructions to afford Mitsui the opportunity to amend its claims or present new evidence regarding the new grounds for rejection.

Judge Newman, in dissent, argued that the Court erred by failing to limit its review to the Board’s grounds for rejection.  The Court disagreed, holding that it can affirm an agency on other grounds “when upholding the agency’s decision does not depend upon making a determination of fact not previously made by the agency.”  The Court found that no new determinations of fact were made—the Board itself determined that Figure 8 and its corresponding text did not disclose any structure corresponding to the disputed term and the Board’s error in broadening the construction of that term was one of law, not fact.