8. Bilstad has not filed a preliminary motion seeking to amend any of Bilstad's claims or
designate any additional Bilstad claims as corresponding to the count for the purpose of
avoiding the asserted unpatentability under 35 U.S.C. § 112, 1 L'
9. An oral hearing was held on Wakalopulos Motion # I on September 27, 2002.
10. After the oral hearing, further submission of papers was terminated. Paper 60.
The subject matter of Bilstad's involved claims
11. Bilstad's involved claims are directed to an apparatus used for sterilizing objects. Bilstad
Application 09/294,964, Paper 15, p. 13.
12. The apparatus includes "a moveable member." Bilstad Application 09/294,964, Paper 15,
p. 13.
13. The claims characterize the moveable member as "manipulating objects in a plurality of
directions . . . ." Bilstad Application 09/294,964, Paper 15, p. 13.
I Bilstad filed the following preliminary motions:
I . Bilstad Preliminary Motion 1 seeking to add a new Claim 66 to the Bilstad application. Proposed
Claim 66 includes the same limitation asserted by Wakalopulos to be lacking descriptive support in
Bilstad's involved claims. Paper 31
2. Bilstad Preliminary Motion 2 seeking to substitute a count. Paper 32.
3. Bilstad Preliminary Motion 3 seeking to designate certain of Wakalopulos non-corresponding claims
as corresponding to the count. Paper 33.
Granting of any of Bilstad's preliminary motions would not affect our decision on Wakalopulos Preliminary Motion
No. 1.
2 Bilstad Claims 57-64 and all of Wakalopulos claims include the following somewhat peculiar
limitation: "a moveable member manipulating objects in a plurality of directions within the reactive volume ...... We
say the limitation is peculiar since it appears from the language as written that in order to meet this limitation the
moveable member would have to be in the act of manipulating an object in a plurality of directions. However, the
parties are in agreement that the limitation should be understood to be a moveable member "capable of'manipulating
objects. Without deciding whether this is an appropriate construction of the claims and for the purpose of this decision
only, we adopt the parties' construction. But this interpretation raises potential questions of its own as to whether the
limitation is a means plus function limitation subject to the required statutory construction of 35 U.S.C. § 112, $ 6,
notwithstanding the lack of the word "means" in the claims. See Micro Chemical, Inc. v. Great Plains Chemical Co.
194 F.3d 1250, 1257, 52 USPQ2d 1258, 1263 (Fed. Cit. 1999); AI-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318,
50 USPQ2d 1161, 1166 (Fed. Cit. 1999) (A claim element may be a "means plus function" element under the statute
notwithstanding the failure to recite the word "means" if such an element nonetheless relies on functional terms rather
than structure or material to describe performance of the claimed function.) The parties argue that the limitation should
not be construed as subject to the provisions of the § 112, T 6. Paper 47, p. 1; Paper 49, pp. 9-10. However, since the
limitation does not specify any structure, and, according to the parties, should not be construed under § 112, 16, the
limitation raises the question of whether it is improper as a "conveniently fiinctional limitation at the exact point of
novelty" under Halliburton Oil Well Cementing Co. v. Walker 329 U.S. 1, 71 USPQ 175 (1946). It is not, however,
necessary to resolve these questions in deciding Bilstad's Prelinfinary Motion 1.
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