In re Keisuke Aoyama, Kojiro Toyoshima, and Yoshitaka Ezaki

A lower court's decision may be affirmed on alternative grounds, but under 37 C.F.R. §41.50(b) a patent applicant may subsequently be allowed to amend claims or offer new evidence not previously of record to overcome the new ground of rejection.

For full opinion:
2011 U.S.App.LEXIS 17987
2011 WL 3796243

Opinion (Linn): The Board of Patent Appeals and Interferences (the "Board") affirmed an examiner's rejection of claims of U.S. Patent Application No. 10/798,505 assigned to Mitsui Bussan Logistics, Inc. ("Mitsui"). The Court of Appeals for the Federal Circuit affirmed rejection of the claims but on the alternative ground of "failure to satisfy the definiteness requirement of 35 U.S.C. §112 [paragraph] 2." In a means-plus-function limitation "where the disclosed structure is a computer programmed to implement an algorithm, the patent must disclose enough of an algorithm to provide necessary structure under 35 U.S.C. §112 [paragraph] 6," so that one of ordinary skill in the art "may perceive the bounds of the invention." The Board concluded Mitsui's Figure 8 failed to describe "how a computer could be programmed to produce the structure that provides the results described" in its flow chart. The Court agreed and found the claims "unpatentable as indefinite under 35 U.S.C. §112 [paragraph] 2." However, under 37 C.F.R. §41.50(b) "the new ground of rejection is binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision." Accordingly, the Court REMANDED the case "to afford Mitsui the same protections . . . it would have enjoyed had the Board made the proper rejection in the first instance."