In Re Teles AG et al.

Docket No. 2012-1297
DYK, MOORE, WALLACH
April 4, 2014

Brief Summary: Transfer under 35 USC § 145 (2006) is only available to patent applicants, not patent owners, in view of 1999 amendments to the Patent Act. “[U]nrecited functional limitations” may not be read into the claims. Board’s obviousness determination affirmed.

Summary: Patent owner Teles AG appealed BPAI determination following an ex parte reexamination proceeding that the claims of US 6,954,453 relating to methods for transmitting data in a telecommunications network would have been obvious and the DC refusal to hear its appeal pursuant to 35 USC § 145 (2006). The opinion first explained that the DC correctly determined that it did not have jurisdiction because, after reviewing the statute and legislative history, transfer under § 145 (in view of 1999 amendments determined to restrict § 145 to patent applicants only) is only available to patent applicants, not patent owners. However, the opinion also noted that the DC should have transferred the case pursuant to 28 USC § 1631 (Transfer to cure want of jurisdiction). Regarding obviousness, the opinion first reviewed the Board’s claim construction (“PTO must give claims their ‘broadest reasonable construction consistent with the specification’” (In re ICON Health & Fitness, FC 2007)). Teles argued that the claim term “means to produce the control signal…automatically” should be defined as in the specification (“Alternatively, it can also be possible for the change-over control device 711 to monitor the bandwidth of a transfer….”) However, the opinion explained that “the fact that the specification describes monitoring bandwidth as an alternative possibility…does not support construing that function to match the alternative function disclosed in the specification rather than the recitation in the claim” (§ 145, para. 6 does not permit “adopting a function different from that expressly recited in the claim”, cannot incorporate “unrecited functional limitations into the claims” (Micro Chem., FC 1999)). Teles also argued that “the Supreme Court’s Mayo decision requires that the ‘inventive concepts’ embodied by the claimed invention be identified as part of construing the claims” but the FC panel explained that the “inventive concept” was only referred to in the context of § 101 and “does not speak to claim construction.” Teles disagreed with the obviousness conclusion because “the prior art references do not disclose all of the recited limitations”. But the FC panel noted that these objections “assume[] an overly limiting construction of the prior art reference the language of claim 35.” It also concluded that other arguments were not persuasive (e.g., another reference “presumes that modifications would be required”) and affirmed the Board decision.