In Re Aoyama, 656 F.3d 1293

Mitsui Bussan Logistics, Inc. owns U.S. Patent Application No. 10/798,505 for a System and Method for Distribution Chain Management and appeals a Board rejection of claims 11 and 21.
The Board affirmed the examiner’s anticipation rejection of claims 11 and 21 based on Yang disclosure, construing the “reverse logistics means for generating transfer data” as a means-plus-function limitation.
Mitsui argued the specification and Figure 8 provide corresponding structure for the function; the Board rejected this as lacking disclosed structure.
The Federal Circuit held that Mitsui’s means-plus-function limitation is linked to the Figure 8 flowchart, and the Board erred by expanding “transfer data” to “shipping data” and by not recognizing the linked structure.
The court ultimately affirmed the Board’s rejections on the alternative ground of indefiniteness under 35 U.S.C. § 112 ¶ 2 and remanded to accord Mitsui protections under 37 C.F.R. § 41.50(b).
Judge Newman dissented, arguing the court should not affirm on a ground not relied upon by the Board and expressing concern about the new indefiniteness grounding.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the means-plus-function limitation is properly linked to the Figure 8 structure.	Mitsui links function to Figure 8 as the corresponding structure.	The Board adopted a broad interpretation, tying to shipping data and generic hardware/software.	No; the court finds the linked structure is Figure 8, and the Board erred in broadening beyond it.
Whether the specification provides sufficient 112,6 structure for the claimed means.	Figure 8 and its description provide the necessary structure.	Figure 8 lacks explicit structure or algorithm for generating transfer data.	No; the Board’s insufficiency finding was improper; the specification does provide linking structure.
Whether indefiniteness is a proper alternative basis to affirm the rejection.	Indefiniteness should not substitute for absence of structure.	Indefiniteness is a permissible basis when the structure is not sufficiently disclosed.	Yes; the court affirms on indefiniteness as an alternative ground and remands with 41.50(b) protections.

In re Donaldson Co., 16 F.3d 1189 (Fed.Cir.1994) (means-plus-function breadth must align with disclosed structure)
WMS Gaming Inc. v. Intl. Game Tech., 184 F.3d 1339 (Fed.Cir.1999) (disclosing algorithmic structure for computer-implemented means)
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed.Cir.2008) (algorithm disclosure must provide sufficient structure under §112 ¶6)
AllVoice Computing PLC v. Nuance Communications, Inc., 504 F.3d 1236 (Fed.Cir.2007) (flowcharts can provide structure for means-plus-function claims)
Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328 (Fed.Cir.2008) (one skilled in the art can flesh out structure from the disclosure)
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed.Cir.2003) (link between function and corresponding structure must be explicit)
In re Comiskey, 554 F.3d 967 (Fed.Cir.2009) (Cheneyadmissible alternatives for affirmance when appropriate)
Cheney M. v. SEC, 318 U.S. 80 (S. Ct. 1943) (agency grounds are controlling; courts may not substitute grounds)
Fleissner, 46 CCPA 831, 264 F.2d 897 (1959) (early view on indefiniteness vs. anticipation)
AllVoice Comput. PLC v. Nuance Commc'ns, Inc., 504 F.3d 1236 (Fed.Cir.2007) (flowchart sufficiency for means-plus-function)
Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365 (Fed.Cir.2010) (definiteness depends on ordinary artisan understanding)