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Archived updates for Tuesday, June 19, 2007

Claimed "Control Means" Unsupported by Illustrated "Control Box" and Reference to "Known Equipment" in Specification

In Biomedino, LLC v. Waters Technologies Corporation, et al. (June 18, 2007) the Federal Circuit affirmed invalidation under § 112, second paragraph, of a claimed molecular regeneration device including "control means for automatically operating valves," where "The only references in the specification to the 'control means' are a box labeled 'Control' in Figure 6 and a statement that the regeneration process of the invention 'may be controlled automatically by known differential pressure, valving and control equipment.'"

According to Senior Judge Archer (joined by C.J.-designate Rader and J. Gajarsa) :

Essentially this case asks the following question: for purposes of § 112, ¶ 6, is sufficient corresponding structure disclosed when the specification simply recites that a claimed function can be performed by known methods or using known
equipment where prior art of record and the testimony of experts suggest that known methods and equipment exist?

. . . In Atmel it was not the fact that one skilled in the art was aware of known circuit techniques that resulted in a conclusion that sufficient structure was recited. Rather, it was the inclusion in the written description of the title of the article which itself described the structure for a "known circuit technique." Expert testimony was used to show what the title of the article would convey to one skilled in the art—in that case it was "the precise structure of the means recited in the specification."

. . . The inquiry [here] is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure. Med. Instrumentation, 344 F.3d at 1212 (citing Atmel, 198 F.3d at 1382). Accordingly, a bare statement that known techniques or methods can be used does not disclose structure. To conclude otherwise would vitiate the language of the statute requiring "corresponding structure, material, or acts described in the specification."

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