As discussed in a previous post (here), certain aspects can be addressed only by petition, whereas others can be addressed only by appeal to the board. Most of the time the demarcation is clear.

But imagine you are at odds with the examiner on whether a certain element is, or is not, a means plus function element. As discussed in previous posts, this issue can be outcome-determinate in some cases. Now imagine the examiner states that the examiner’s claim interpretation is non-appealable. Further imagine two supervisors sign-off on that reasoning in an examiner’s answer. Well, you don’t have to imagine it - rather just read the prosecution history for Application 15/336,502. It is disappointing that a seasoned examiner, and two supervisors, would at best be so uninformed to believe such things, and at worst purposely try to mislead an applicant. Below are some screen shots in case you think this is made up:

The PTAB made a note to hopefully clear this up for the examiner (and 2 supervisors):

Given the above, it should not come as a shock that this examiner illustrates many traits of an unreasonable examiner. As with most such examiners, there was a restriction. The applicant tried numerous interviews, and was lured into an RCE, to no avail. Eventually, the applicant learned the score of the situation and started preparing for an appeal (and did not waste time trying to petition the interpretation), including filing a 132 declaration to put evidence on the record as to various issues, including claim interpretation, while the examiner continued to reject the application and pile on various 112 issues.

Looking to the means plus function issues in this case, claim 1 is below:

1. A sample analysis cartridge comprising:
a housing;
an input tunnel that extends from an aperture in the housing, the input tunnel configured to permit insertion of a sample collection device having a distal portion adapted to be exposed to a sample;
a reservoir disposed within the housing adjacent to the input tunnel and configured to hold a fluid, the reservoir further configured to receive the sample collected by the sample collection device;
a sealing material configured to fluidicly seal the fluid within the reservoir; and
a seal piercer comprising an engager, a slot, and a piercer, the seal piercer disposed within the housing such that the piercer is adjacent to the reservoir and the engager is within the input tunnel, the engager configured to be contacted by the sample collection device within the input tunnel to slide the seal piercer via the slot during insertion of the sample collection device in the input tunnel, responsive to force applied by the sample collection device, such that the piercer moves in a first direction and a second direction, different from the first direction, to pierce the sealing material to vent the fluid in the reservoir.

The PTAB confirms that, when the claims do not use the word “means”, the examiner bears the burden of demonstrating that 112(f) should apply to the claims. One might notice that many PTAB decisions on 112(f) interpretations do not begin with this point (since most such appeals involve merely attorney argument rebutting the examiner’s case). But here, because the applicant put evidence in the record (via the 132 declaration), this issue comes into play. As explained by the PTAB:

Here, none of the disputed limitations use the word “means.” Therefore, Examiner, as challenger, bears the burden of demonstrating that § 112(f) should apply to the claim terms. The Examiner finds the terms “are nonce-type terms that are of Applicant’s own design, and recitations thereto do not provide a clear and sufficient structure as such recitations are drawn to vague descriptors.” Ans. 3–4. The record, which includes the claim language and Appellant’s disclosure, does not support the Examiner’s findings or conclusion that § 112(f) should apply for the disputed terms.

When analyzing whether the presumption against applying § 112(f) is overcome, we consider how a claim limitation is “used in the context of the relevant claim language.” Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1348 (Fed. Cir. 2016). Further, “[i]n undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure,” which avoids application of § 112(f). Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372–73 (Fed. Cir. 2015) (analyzing specification to determine if term was described in specific structural terms). We address the interpretation of each of the disputed limitations below.

Applying this approach, the PTAB rejected every single one of the examiner’s interpretations. As one example, the examiner alleged that the term “engager” was a nonce-type word and that the specification, while giving examples (elements 380, 380’, and 380’’), did not give a clear structural definition of the term. (As a quick aside, imagine if when drafting a patent application, one had to give a structural definition of every labeled aspect of features in a drawing - the specification length would be staggering.) The applicant asserted that the engager would be understood to connote structure, and that the specification explained that as sample collection device 200 is moved distally through input tunnel 301, slider 322 engages sample collection device 200 by temporarily or permanently coupling engager 380 of slider 322 to engagement zone 209 of sample collection device 200.

The PTAB agreed and marched through each and every 112 issue and found for the applicant, thus reversing all rejections.

So, remember that examiners will make wild assertions as to their unlimited power and the burden is on the applicant to beware and know the rules and procedures for themselves.