Dissent in CAFC Avid decision: Random is the polite word for the Board’s erratic behavior.

In the Avid case, a 2-1 majority in the CAFC affirmed rejections by the
Board in an ex parte reexamination:

Avid Identification Systems, Inc. (“Avid”) appeals
from the decision of the Board of Patent Appeals and
Interferences (“the Board”) of the United States Patent
and Trademark Office (“PTO”) in an ex parte reexamination,
rejecting claims 1, 3–10, 12, and 16–20 of its U.S.
Patent 5,499,017 (the “’017 patent”) as anticipated and
obvious over three references. See Ex Parte Avid Identification
Sys., Inc., No. 2011-000474 (B.P.A.I. Mar. 23, 2011)
(“Board Opinion”), reh’g denied, No. 2011-000474
(B.P.A.I. June 14, 2011) (“Rehearing Opinion”). Because
the Board did not err in rejecting the claims as anticipated
and obvious, we affirm.

The dissent [Clevenger] in Avid noted:

The term “a means for permanently storing data” is
undeniably a means-plus-function limitation. The question
in this case is whether the Patent Office (“PTO”) may
use an unaltered broadest reasonable interpretation
standard in examining means-plus-function claims, or if
these claims must always be interpreted in accordance
with 35 U.S.C. § 112, ¶ 6. The answer is easy.

35 U.S.C. § 112, our en banc decision In re Donaldson, the
Manual of Patent Examining Procedure (“MPEP”), and
past PTO practice are all in agreement: under § 112, ¶ 6,
“the broadest reasonable interpretation that an examiner
may give means-plus-function language is that statutorily
mandated in paragraph six.” In re Donaldson, 16 F.3d
1189 (Fed. Cir. 1189) (en banc). Here, the PTO did not
analyze the claim under § 112, ¶ 6, and so the only appropriate
action is to remand the case to the Examiner with
instructions to apply a correct claim construction.

The dissent noted the change in nomenclature:

Under the America Invents Act, § 112, ¶ 6 has been
converted via amendment to § 112(f), which reads: “[a]n
element in a claim for a combination may be expressed as
a means or step for performing a specified function without
the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.” 35 U.S.C. § 112(f)
(effective September 16, 2012).

AND, in stark language,

The PTO is required to act properly under the Administrative
Procedure Act. It cannot behave arbitrarily. But
it does so regularly, much to the detriment of the public,
when confronting § 112, ¶ 6 claims. Sometimes it honors
its Donaldson duties, and sometimes it shirks them,
hiding behind 37 C.F.R. § 41.37(c)(1)(v). Random is the
polite word for the Board’s erratic behavior. This court
should hold the PTO to its obligations, because doing so
benefits the public.

Finally,

We would know the answer to these questions
had the PTO not shirked its Donaldson duties. In my
view, the anticipation and obviousness judgments by the
Board are infected, and the infection can only be cured by
proper application of § 112, ¶¶ 6 and 2.
The correct result in this appeal is a remand to the
Board with directions to follow the lead of Judge Torczon
and obey Donaldson. Because the majority does not agree
with me, I respectfully dissent.