Yesterday, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 102(e) anticipation rejection of a key ARM Ltd. microprocessor invention. As a Miami Patent Lawyer that deals with the BPAI frequently, this case is instructive because it illustrates the patent law related to functional equivalents in a hardware device.
At issue in ARM's claimed invention was the existence of a memory management unit (i.e., a physical hardware component referred to as an MMU), which the Examiner asserted was found in the cited patent. The BPAI decision disagreed and stated: "the Examiner paints with a broad brush by reading the claimed memory management unit on nebulous "logic/circuitry that manages indirect and direct access to the Graphics Memory 116" without clearly specifying in the record which particular component in [the cited patent] corresponds to Appellants' claimed memory management unit." The BPAI went on to state: "since the Examiner does not identify the specific hardware component in [the cited patent] that corresponds to the claimed MMU, the Examiner appears to be relying on certain memory management functions performed by various software components in [the cited patent] ... However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) ("the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant."). Consequently, the Examiner's 35 U.S.C. sec. 102(e) anticipation rejection was reversed.
In this case, the Examiner erred in asserting that the functions described in the cited patent were equivalent to a claimed structural component. This legally erroneous finding of "functional equivalence" is something I see often in dealing with Patent Examiners. It is all too common for a Patent Examiner to point to "nebulous" logic in a cited patent and assert that it's equivalent to a structural component in your claim. When pressed to point out exactly which component in the cited patent corresponds to the claimed component, I rarely get a straight answer. This BPAI decision is important and a precedent I will surely cite in the future.
The practice pointer illustrated in this case is the following: when prosecuting computer hardware or general mechanical claims, for each claimed structural component, the Patent Examiner must point to a specific component in the cited art. It is not enough for the Examiner to point to a "nebulous" or general area of the cited art and claim that it performs the same function as the claimed component. That would be painting with a "broad brush." The Examiner must point to a specific component in the prior art AND it must perform the same function as the claimed component. If the Examiner fails to do this, you have a good premise for reversing on appeal to the BPAI.
