Appeal No. 2006-2217
Reexamination Control Nos. 90/006,789 and 90/007,420
controller 66 alone or in combination with decoder 70, and
equivalents thereof" (Br9) and that the means for performing the
functions of "asserting a plurality of memory address control
signals for accessing a plurality of times the memory of the
replying agent" and "detecting a completion of the access to
memory" is "the circuitry within or associated with the memory
access control portion of the memory controller 66, and
equivalents thereof" (Br9; Br10). No circuitry is disclosed in
connection with the block diagram of the memory controller 66 in
Fig. 5. This raises a potential question of whether the claims
are indefinite under 35 U.S.C. § 112, second paragraph, for
failing to adequately disclose structure corresponding to the
claimed functions since the memory controller is the invention
and, unlike a block corresponding to a commercially available
unit, presumably would not have been understood by a person
skilled in the art to disclose structure capable of performing
the recited function. See Medical Instrumentation and
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1213-1214,
68 USPQ2d 1263, 1270-71 (Fed. Cir. 2003). This is not the same
as enablement. However, since claim 1 is an original patent
claim and claims 2 and 6 incorporate the subject matter of
claim 1, the § 112 issue is not appropriate for consideration in
a reexamination proceeding. See 37 CFR § 1.552. It is proper to
note the existence of the issue. See § 1.552(c).
Since no structure is disclosed for the block diagram, we
assume that any structure for performing the claimed functions is
at least an equivalent of the "means."
There is a claim interpretation issue as to whether
apparatus claims 1, 2, and 6 are directed to a "memory control
apparatus" alone or in combination with a data processing system.
Claims 2 and 6 share the limitations of claim 1, so we limit the
discussion to claim 1. The preamble recites a "[m]emory control
apparatus for use in a data processing system having at least a
requesting agent and said [sic] replying agent electrically
coupled together by a system bus, the requesting agent requesting
access to a memory on the replying agent for storing and
retrieving data therein over the system bus, the apparatus
comprising: . . . ." The preamble seems to indicate that what is
being claimed is the memory control apparatus and that the
limitations following "for use in" are statements of intended
use, which only limit the claims to the extent that the memory
control apparatus must be capable of being used in such an
environment. See Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345, 65 USPQ2d 1961, 1965
(Fed. Cir. 2003) ("An intended use or purpose usually will not
limit the scope of the claim because such statements usually do
no more than define a context in which the invention operates.").
The body of the claim is mostly consistent with this "intended
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007