The statutory requirement for importing the specification’s structural limitations into a means-plus-function element does not extend to or otherwise impact the interpretation of the recited function as claimed. “When construing functional claims under § 112 ¶ 6, the statute does not permit limitation of a means-plus-function claim by adopting a function different from that explicitly recited in the claim.”
Background / Facts: The patent on appeal here from rejection under reexamination at the PTO pertains to the utilization of line switching and packet switching in routing telephone calls. The claims recite a device for switching from a packet-switched network to a line-switched network “automatically when demands on the quality of the data transfer are understepped or exceeded.” This is achieved via a control signal and a corresponding “means to produce the control signal.” The PTO interpreted the function of the corresponding means element to require monitoring factors related to demands of quality in order to produce the control signal, but did not limit those factors to include only the bandwidth of a particular transfer, as argued by the patentee to avoid a finding of obviousness.
Issue(s): Whether the specification requires that the recited function include monitoring the bandwidth of the packet-switched network in connection with the transfer.
Holding(s): No. “[T]he fact that the specification describes monitoring bandwidth as an alternative possibility for producing a change-over command does not support construing that function to match the alternative function disclosed in the specification rather than the recitation in the claim. When construing functional claims under § 112 ¶ 6, ‘[t]he statute does not permit limitation of a means-plus-function claim by adopting a function different from that explicitly recited in the claim.’” As a short aside, the court was quick to shoot down the patentee’s suggestion that the Supreme Court’s Mayo decision requires that the “inventive concepts” embodied by the claimed invention be identified as part of construing claims in general. “[T]he [Supreme] Court in Mayo referred to an ‘inventive concept’ only in the context of § 101 patent-eligibility analysis.”