Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

This section sets forth guidelines for the examination of

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth paragraph,

“means or step plus function” limitations in a claim. Throughout this section, reference is

made to

35

U.S.C. 112(f)

, however the guidance is equally applicable to

pre-AIA 35 U.S.C.

112

, sixth paragraph.

The Court of Appeals for the Federal Circuit, in its

en

banc

decision

In re Donaldson Co.,

16 F.3d 1189, 1194, 29

USPQ2d 1845, 1850 (Fed. Cir. 1994), stated:

Per our holding, the "broadest reasonable interpretation" that an

examiner may give means-plus-function language is that statutorily mandated in paragraph

six. Accordingly, the PTO may not disregard the structure disclosed in the specification

corresponding to such language when rendering a patentability determination.

In

Williamson v. Citrix Online, LLC,

792

F.3d 1339, 1349, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015) the court stated:

[t]he standard is whether the words of the claim are

understood by persons of ordinary skill in the art to have a sufficiently definite

meaning as the name for structure.

Therefore, the broadest reasonable interpretation of a claim

limitation that invokes

35 U.S.C. 112(f)

is the structure,

material or act described in the specification as performing the entire claimed function

and equivalents to the disclosed structure, material or act. As a result,

section

112(f)

limitations will, in some cases, be afforded a more narrow

interpretation than a limitation that is not crafted in “means plus function” format.

Structural elements may appear in both product claims and process claims; thus, all claim

types should be reviewed for the presence of “means-plus-function” limitations.

Rain Computing, Inc. v. Samsung Elecs. Am. Inc.,

989 F.3d 1002, 1006,

2021 USPQ2d 284, (Fed. Cir. 2021) (“Applicants are free to invoke

§ 112 ¶ 6

for

a claim term nested in a method claim. We have never held otherwise.”). See also

Media Rights Technologies, Inc. v. Capital One Financial Corp.,

800

F.3d 1366, 1374, 116 USPQ2d 1144 (Fed. Cir

wed for the presence of “means-plus-function” limitations.

Rain Computing, Inc. v. Samsung Elecs. Am. Inc.,

989 F.3d 1002, 1006,

2021 USPQ2d 284, (Fed. Cir. 2021) (“Applicants are free to invoke

§ 112 ¶ 6

for

a claim term nested in a method claim. We have never held otherwise.”). See also

Media Rights Technologies, Inc. v. Capital One Financial Corp.,

800

F.3d 1366, 1374, 116 USPQ2d 1144 (Fed. Cir. 2015) (holding that the term “compliance

mechanism” in a method claim was a means-plus-function term).

I.

DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or PRE-AIA 35

U.S.C. 112, SIXTH PARAGRAPH

The USPTO must apply

35 U.S.C. 112(f)

in appropriate

cases, and give claims their broadest reasonable interpretation (BRI), in light of and

consistent with the written description of the invention in the application. In

determining the BRI, examiners should establish the meaning of each claim term

consistent with the specification as it would be interpreted by one of ordinary skill in

the art, including identifying and construing functional claim limitations. If a claim

limitation recites a term and associated functional language, the examiner should

determine whether the claim limitation invokes

35 U.S.C.

112(f)

. Application of

35 U.S.C.

112(f)

is driven by the claim language, not by applicant’s intent

or mere statements to the contrary included in the specification or made during

prosecution. See

In re Donaldson Co.,

16 F.3d at 1194, 29 USPQ2d at

1850 (stating that

35 U.S.C. 112

, sixth paragraph “merely sets a limit on how

broadly the PTO may construe means-plus-function language under the rubric of reasonable

interpretation’”). The Federal Circuit has held that applicants (and reexamination

patentees) before the USPTO have the opportunity and the obligation to define their

inventions precisely during proceedings before the USPTO. See

In re

Morris,

127 F.3d 1048, 1056–57, 44 USPQ2d 1023, 1029–30 (Fed. Cir. 1997)

(

35 U.S.C

the PTO may construe means-plus-function language under the rubric of reasonable

interpretation’”). The Federal Circuit has held that applicants (and reexamination

patentees) before the USPTO have the opportunity and the obligation to define their

inventions precisely during proceedings before the USPTO. See

In re

Morris,

127 F.3d 1048, 1056–57, 44 USPQ2d 1023, 1029–30 (Fed. Cir. 1997)

(

35 U.S.C.

112

, second paragraph places the burden of precise claim drafting

on the applicant);

In re Zletz,

893 F.2d 319, 322, 13 USPQ2d 1320,

1322 (Fed. Cir. 1989) (manner of claim interpretation that is used by courts in

litigation is not the manner of claim interpretation that is applicable during

prosecution of a pending application before the USPTO);

Sage Prods., Inc. v.

Devon Indus., Inc.,

126 F.3d 1420, 1425, 44 USPQ2d 1103, 1107 (Fed. Cir.

1997) (patentee who had a clear opportunity to negotiate broader claims during

prosecution but did not do so, may not seek to expand the claims through the doctrine of

equivalents, for it is the patentee, not the public, who must bear the cost of failure

to seek protection for this foreseeable alteration of its claimed structure).

A claim limitation is presumed to invoke

35 U.S.C.

112(f)

when it explicitly uses the term “means” or “step” and

includes functional language. The presumption that

35 U.S.C.

112(f)

applies is overcome when the limitation further includes

the structure, material or acts necessary to perform the recited function. See

TriMed, Inc. v. Stryker Corp.,

514 F.3d 1256, 1259-60, 85 USPQ2d

1787, 1789 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language

specifies the exact structure that performs the function in question without need to

resort to other portions of the specification or extrinsic evidence for an adequate

understanding of the structure.”); see also

Altiris, Inc. v. Symantec

Corp.,

318 F.3d 1363, 1376, 65 USPQ2d 1865, 1874 (Fed. Cir. 2003)

60, 85 USPQ2d

1787, 1789 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language

specifies the exact structure that performs the function in question without need to

resort to other portions of the specification or extrinsic evidence for an adequate

understanding of the structure.”); see also

Altiris, Inc. v. Symantec

Corp.,

318 F.3d 1363, 1376, 65 USPQ2d 1865, 1874 (Fed. Cir. 2003).

By contrast, a claim limitation that does not use the

term “means” or “step” will trigger the rebuttable presumption that

35 U.S.C.

112(f)

does not apply. See, e.g.,

Phillips v. AWH

Corp.,

415 F.3d 1303, 1310, 75 USPQ2d 1321, 1324 (Fed. Cir. 2005)

(en banc)

;

CCS Fitness, Inc. v. Brunswick

Corp.,

288 F.3d 1359, 1369, 62 USPQ2d 1658, 1664 (Fed. Cir. 2002);

Personalized Media Communications, LLC v. International Trade

Commission,

161 F.3d 696, 703-04, 48 USPQ2d 1880, 1886–87 (Fed. Cir. 1998).

Even in the face of this presumption, the examiner should nonetheless consider whether

the presumption is overcome. The presumption that

35 U.S.C.

112(f)

does not apply to a claim limitation that does not use the

term "means" is overcome when "the claim term fails to 'recite sufficiently definite

structure' or else recites 'function without reciting sufficient structure for

performing that function.'"

Williamson,

792 F.3d at 1349, 115 USPQ2d

at 1111 (Fed. Cir. 2015) (

en banc

) (quoting

Watts v. XL

Systems, Inc.,

232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000);

see also

Personalized Media Communications, LLC v. International Trade

Commission,

161 F. 3d 696, 704, 48 USPQ2d 1880, 1887 (Fed. Cir. 1998).

Instead of using “means” in such cases, a substitute

term acts as a generic placeholder for the term “means” and would not be recognized by

one of ordinary skill in the art as being sufficiently definite structure for performing

the claimed function

. 2000);

see also

Personalized Media Communications, LLC v. International Trade

Commission,

161 F. 3d 696, 704, 48 USPQ2d 1880, 1887 (Fed. Cir. 1998).

Instead of using “means” in such cases, a substitute

term acts as a generic placeholder for the term “means” and would not be recognized by

one of ordinary skill in the art as being sufficiently definite structure for performing

the claimed function. "The standard is whether the words of the claim are understood by

persons of ordinary skill in the art to have a sufficiently definite meaning as the name

for structure."

Williamson,

792 F.3d at 1349, 115 USPQ2d at 1111; see

also

Greenberg v. Ethicon Endo-Surgery, Inc.,

91 F.3d 1580, 1583, 39

USPQ2d 1783, 1786 (Fed. Cir. 1996).

Accordingly, examiners will apply

35 U.S.C.

112(f)

to a claim limitation if it meets the following 3-prong

analysis:

(A) the claim limitation uses the term “means” or “step” or a term

used as a substitute for “means” that is a generic placeholder (also called a

nonce term or a non-structural term having no specific structural meaning) for

performing the claimed function;

(B) the term “means” or “step” or the generic placeholder is modified

by functional language, typically, but not always linked by the transition word

“for” (e.g., “means for”) or another linking word or phrase, such as "configured

to" or "so that"; and

(C) the term “means” or “step” or the generic placeholder is not

modified by sufficient structure, material, or acts for performing the claimed

function.

A determination that a claim is being interpreted

according to

35 U.S.C. 112(f)

should be expressly stated in the examiner’s

Office action. If a claim limitation uses the term “means” or “step,” but the examiner

determines that either the second prong or the third prong of the 3-prong analysis is

not met, then in these situations, the examiner must include a statement in the Office

action explaining the reasons why a claim limitation which uses the term “means” or

“step” is not being treated under

35 U.S.C. 112(f)

er’s

Office action. If a claim limitation uses the term “means” or “step,” but the examiner

determines that either the second prong or the third prong of the 3-prong analysis is

not met, then in these situations, the examiner must include a statement in the Office

action explaining the reasons why a claim limitation which uses the term “means” or

“step” is not being treated under

35 U.S.C. 112(f)

.

In response to the Office action that finds that

35 U.S.C.

112(f)

is invoked, if applicant does not want to have the claim

limitation interpreted under

35 U.S.C. 112(f)

, applicant may: (1)

present a sufficient showing to establish that the claim limitation recites sufficient

structure to perform the claimed function so as to avoid interpretation under

35 U.S.C.

112(f)

; or (2) amend the claim limitation in a way that avoids

interpretation under

35 U.S.C. 112(f)

(e.g., by reciting

sufficient structure to perform the claimed function).

In the event that it is unclear whether the claim

limitation falls within the scope of

35 U.S.C. 112(f)

, a rejection under

35 U.S.C.

112(b)

may be appropriate.

A.

The Claim Limitation Uses the Term “Means” or “Step” or a Generic

Placeholder (A Term That Is Simply A Substitute for “Means”)

With respect to the first prong of this analysis, a claim element

that does not include the term “means” or “step” triggers a rebuttable presumption

that

35

U.S.C. 112(f)

does not apply. When the claim limitation does

not use the term “means,” examiners should determine whether the presumption that

35

U.S.C. 112(f)

does not apply is overcome. The presumption may

be overcome if the claim limitation uses a generic placeholder (a term that is simply

a substitute for the term “means”). The following is a list of non-structural generic

placeholders that may invoke

35 U.S.C. 112(f)

:

“mechanism for,” “module for,” “device for,” “unit for,” “component for,”

“element for,” “member for,” “apparatus for,” “machine for,” or “system

for.”

Welker Bearing Co., v

on may

be overcome if the claim limitation uses a generic placeholder (a term that is simply

a substitute for the term “means”). The following is a list of non-structural generic

placeholders that may invoke

35 U.S.C. 112(f)

:

“mechanism for,” “module for,” “device for,” “unit for,” “component for,”

“element for,” “member for,” “apparatus for,” “machine for,” or “system

for.”

Welker Bearing Co., v. PHD, Inc.,

550 F.3d 1090, 1096, 89 USPQ2d

1289, 1293-94 (Fed. Cir. 2008);

Mass. Inst. of Tech. v. Abacus

Software,

462 F.3d 1344, 1354, 80 USPQ2d 1225, 1228 (Fed. Cir. 2006);

Personalized Media,

161 F.3d at 704, 48 USPQ2d at 1886–87;

Mas-Hamilton Group v. LaGard, Inc.,

156 F.3d 1206, 1214-1215,

48 USPQ2d 1010, 1017 (Fed. Cir. 1998). Note that there is no fixed list of generic

placeholders that always result in

35 U.S.C. 112(f)

interpretation,

and likewise there is no fixed list of words that always avoid

35 U.S.C.

112(f)

interpretation. Every case will turn on its own unique

set of facts.

"The standard is whether the words of the claim are

understood by persons of ordinary skill in the art to have a sufficiently definite

meaning as the name for structure."

Williamson v. Citrix Online,

LLC, 792 F.3d 1339, 1349, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015). The issue in

Williamson

was whether a “distributed learning control module”

limitation in claims directed to a distributed learning system should be interpreted

as a means-plus-function limitation. See

Williamson,

792 F.3d at

1347, 115 USPQ2d at 1110. The Federal Circuit concluded that "the 'distributed

learning control module' limitation fails to recite sufficiently definite structure

and that the presumption against means-plus function claiming is rebutted."

Id.

at 1351, 115 USPQ2d at 1113. In support, the Federal

Circuit determined that "the word 'module' does not provide any indication of

structure because it sets forth the same black box recitation of structure for

providing the same specified function as if the term ‘means’ had been used."

Id

ufficiently definite structure

and that the presumption against means-plus function claiming is rebutted."

Id.

at 1351, 115 USPQ2d at 1113. In support, the Federal

Circuit determined that "the word 'module' does not provide any indication of

structure because it sets forth the same black box recitation of structure for

providing the same specified function as if the term ‘means’ had been used."

Id.

at 1350–51, 115 USPQ2d at 1112.

If persons of ordinary skill in the art reading the

specification understand the term to have a sufficiently definite meaning as the name

for the structure that performs the function, even when the term covers a broad class

of structures or identifies the structures by their function (e.g., “filters,”

“brakes,” “clamp,” “screwdriver,” and “locks”)

35 U.S.C.

112(f)

will not apply.

Apex Inc. v. Raritan Computer,

Inc.,

325 F.3d 1364, 1372-73, 66 USPQ2d 1444, 1451-52 (Fed. Cir. 2003);

CCS Fitness,

288 F.3d at 1369, 62 USPQ2d at 1664;

Watts v. XL Sys. Inc.,

232 F.3d 877, 880-81, 56 USPQ2d 1836,

1839 (Fed. Cir. 2000);

Personalized Media,

161 F.3d at 704, 48

USPQ2d at 1888;

Greenberg v. Ethicon Endo-Surgery, Inc.,

91 F.3d

1580, 1583, 39 USPQ2d 1783, 1786 (Fed. Cir. 1996) (“Many devices take their names

from the functions they perform.”). Similarly, the terms “code” and “application”

have been found not to be generic placeholders where persons of ordinary skill in the

art would understand the terms in combination with the function performed by the code

or application as connoting structure.

Dyfan, LLC v. Target Corp.,

28 F.4th 1360, 1368-69, 2022 USPQ2d 288 (Fed. Cir. 2022); see also

Zeroclick, LLC v. Apple Inc.,

891 F.3d 1003, 1008-1009, 126

USPQ2d 1765 (Fed. Cir. 2018) (finding that “a person of ordinary skill in the art

could reasonably discern from the claim language that the words ‘program’ … and ‘user

interface code’ … are used not as generic terms or black box recitations of structure

or abstractions….”)

28 F.4th 1360, 1368-69, 2022 USPQ2d 288 (Fed. Cir. 2022); see also

Zeroclick, LLC v. Apple Inc.,

891 F.3d 1003, 1008-1009, 126

USPQ2d 1765 (Fed. Cir. 2018) (finding that “a person of ordinary skill in the art

could reasonably discern from the claim language that the words ‘program’ … and ‘user

interface code’ … are used not as generic terms or black box recitations of structure

or abstractions….”). The term is not required to denote a specific structure or a

precise physical structure to avoid the application of

35 U.S.C.

112(f)

. See

Watts,

232 F.3d at 880, 56

USPQ2d at 1838;

Inventio AG v. Thyssenkrupp Elevator Americas

Corp.,

649 F.3d 1350, 99 USPQ2d 1112 (Fed. Cir. 2011) (holding that the

claim terms "modernizing device" and "computing unit" when read in light of the

specification connoted sufficient, definite structure to one of skill in the art to

preclude application of

35 U.S.C. 112

, sixth paragraph).

The following are examples of structural terms that have been found

not

to invoke

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C. 112

, paragraph

6: “circuit,” “detent mechanism,” “digital detector,” “reciprocating member,”

“connector assembly,” “perforation,” “sealingly connected joints,” and “eyeglass

hanger member.” See

Mass. Inst. of Tech.,

462 F.3d at 1355-1356,

80 USPQ2d at 1332 (the court found the recitation of "aesthetic correction circuitry"

sufficient to avoid

pre-AIA 35 U.S.C. 112

, paragraph 6, treatment because the term

circuit, combined with a description of the function of the circuit, connoted

sufficient structure to one of ordinary skill in the art.);

Linear Tech.

Corp. v. Impala Linear Corp.,

379 F.3d 1311, 1321, 72 USPQ2d 1065, 1071

(Fed. Cir. 2004);

Apex,

325 F.3d at 1373, 66 USPQ2d at 1452;

Greenberg,

91 F.3d at 1583-84, 39 USPQ2d at 1786;

Personalized Media,

161 F.3d at 704-05, 39 USPQ2d at 1786;

CCS Fitness,

288 F.3d at 1369-70, 62 USPQ2d at 1664-65;

Cole v. Kimberly-Clark Corp.,

102 F.3d 524, 531, 41 USPQ2d

1001, 1006 (Fed. Cir. 1996);

Watts,

232 F.3d at 881, 56 USPQ2d at

1839;

Al-Site Corp

11, 1321, 72 USPQ2d 1065, 1071

(Fed. Cir. 2004);

Apex,

325 F.3d at 1373, 66 USPQ2d at 1452;

Greenberg,

91 F.3d at 1583-84, 39 USPQ2d at 1786;

Personalized Media,

161 F.3d at 704-05, 39 USPQ2d at 1786;

CCS Fitness,

288 F.3d at 1369-70, 62 USPQ2d at 1664-65;

Cole v. Kimberly-Clark Corp.,

102 F.3d 524, 531, 41 USPQ2d

1001, 1006 (Fed. Cir. 1996);

Watts,

232 F.3d at 881, 56 USPQ2d at

1839;

Al-Site Corp. v. VSI Int’l, Inc.,

174 F.3d 1308, 1318-19, 50

USPQ2d 1161, 1166-67 (Fed. Cir. 1999).

For a term to be considered a substitute for “means,”

and lack sufficient structure for performing the function, it must serve as a generic

placeholder and thus not limit the scope of the claim to any specific manner or

structure for performing the claimed function. It is important to remember that there

are no absolutes in the determination of terms used as a substitute for “means” that

serve as generic placeholders. The examiner must carefully consider the term in light

of the specification and the commonly accepted meaning in the technological art.

Every application will turn on its own facts.

If the examiner has not interpreted a claim limitation

as invoking

35 U.S.C. 112(f)

and an applicant

wishes to have the claim limitation treated under

35 U.S.C.

112(f)

applicant must either: (A) amend the claim to include

the phrase “means” or “step”; or (B) rebut the presumption that

35 U.S.C.

112(f)

does not apply by showing that the claim limitation is

written as a function to be performed and does not recite sufficient structure,

material, or acts to perform that function. See

Watts,

232 F.3d at

881, 56 USPQ2d at 1839 (Fed. Cir. 2000) (Claim limitations were held not to invoke

35 U.S.C.

112

, sixth paragraph, because the absence of the term “means”

raised the presumption that the limitations were not in means-plus-function form and

the applicant did not rebut that presumption.); see also

Masco Corp. v.

United States,

303 F.3d 1316, 1327, 64 USPQ2d 1182, 1189 (Fed. Cir

e

Watts,

232 F.3d at

881, 56 USPQ2d at 1839 (Fed. Cir. 2000) (Claim limitations were held not to invoke

35 U.S.C.

112

, sixth paragraph, because the absence of the term “means”

raised the presumption that the limitations were not in means-plus-function form and

the applicant did not rebut that presumption.); see also

Masco Corp. v.

United States,

303 F.3d 1316, 1327, 64 USPQ2d 1182, 1189 (Fed. Cir.

2002) (“[W]here a method claim does not contain the term ‘step[s] for,’ a limitation

of that claim cannot be construed as a step-plus-function limitation without a

showing that the limitation contains no act.”).

Some of the following examples illustrate situations where the term

“means” or “step” was not used but either the Board or courts nevertheless determined

that the claim limitation fell within the scope of

35 U.S.C.

112(f)

. Note that the examples are fact specific and should not

be applied as

per se

rules. See

Signtech USA, Ltd. v.

Vutek, Inc.,

174 F.3d 1352, 1356, 50 USPQ2d 1372, 1374–75 (Fed.

Cir.1999) (“ink delivery means positioned on …” invokes

35 U.S.C. 112

,

sixth paragraph since the phrase “ink delivery means” is equivalent to “means for ink

delivery”);

Seal-Flex, Inc. v. Athletic Track and Court

Construction,

172 F.3d 836, 850, 50 USPQ2d 1225, 1234 (Fed. Cir. 1999)

(Rader, J., concurring) (“Claim elements without express step-plus-function language

may nevertheless fall within

Section 112

, Para. 6 if they

merely claim the underlying function without recitation of acts for performing that

function…. In general terms, the ‘underlying function’ of a method claim element

corresponds to

what

that element ultimately accomplishes in

relationship to what the other elements of the claim and the claim as a whole

accomplish. ‘Acts,’ on the other hand, correspond to

how

the

function is accomplished…. If the claim element uses the phrase ‘step for,’ then

Section

112

, Para. 6 is presumed to apply…. On the other hand, the term

‘step’ alone and the phrase ‘steps of’ tend to show that

Section 112

,

Para

ment ultimately accomplishes in

relationship to what the other elements of the claim and the claim as a whole

accomplish. ‘Acts,’ on the other hand, correspond to

how

the

function is accomplished…. If the claim element uses the phrase ‘step for,’ then

Section

112

, Para. 6 is presumed to apply…. On the other hand, the term

‘step’ alone and the phrase ‘steps of’ tend to show that

Section 112

,

Para. 6 does not govern that limitation.”);

Personalized Media,

161 F.3d at 703–04, 48 USPQ2d at 1886–87 (Fed. Cir. 1998);

Mas-Hamilton,

156 F.3d at 1213, 48 USPQ2d at 1016 (Fed. Cir.

1998) (“lever moving element for moving the lever” and “movable link member for

holding the lever…and for releasing the lever” were construed as means-plus-function

limitations invoking

35 U.S.C. 112

, sixth paragraph

since the claimed limitations were described in terms of their function rather than

their mechanical structure);

Ethicon, Inc. v. United States Surgical

Corp.,

135 F.3d 1456, 1463, 45 USPQ2d 1545, 1550 (Fed. Cir. 1998) (“use

of the word ‘means’ gives rise to a presumption that the inventor used the term

advisedly to invoke the statutory mandates for means-plus-function clauses”)

(quotation omitted). However, compare

Al-Site Corp. v. VSI Int’l,

Inc.,

174 F.3d 1308, 1317-19, 50 USPQ2d 1161, 1166-67 (Fed. Cir. 1999)

(holding that although the claim elements “eyeglass hanger member” and “eyeglass

contacting member” include a function, these claim elements do not invoke

35 U.S.C.

112

, sixth paragraph because the claims themselves contain

sufficient structural limitations for performing these functions);

O.I.

Corp. v. Tekmar,

115 F.3d 1576, 1583, 42 USPQ2d 1777, 1782 (Fed. Cir.

1997) (method claim that paralleled means-plus-function apparatus claim but lacked

“step for” language did not invoke

35 U.S.C. 112

, sixth paragraph).

When applicant uses the term “means” or “step” in the

preamble, a rejection under

35 U.S.C

mselves contain

sufficient structural limitations for performing these functions);

O.I.

Corp. v. Tekmar,

115 F.3d 1576, 1583, 42 USPQ2d 1777, 1782 (Fed. Cir.

1997) (method claim that paralleled means-plus-function apparatus claim but lacked

“step for” language did not invoke

35 U.S.C. 112

, sixth paragraph).

When applicant uses the term “means” or “step” in the

preamble, a rejection under

35 U.S.C. 112(b)

may be

appropriate when it is unclear whether the preamble is reciting a means- (or step-)

plus- function limitation or whether the preamble is merely stating the intended use

of the claimed invention. When applicant merely states an intended use of the claimed

invention in the preamble (e.g., "A device for printing, comprising ..."), the

examiner should not construe such language as reciting a means-plus-function

limitation.

The examiner is reminded that, absent a determination

that a claim limitation invokes

35 U.S.C. 112(f)

, the broadest

reasonable interpretation will not be limited to “corresponding structure… and

equivalents thereof.”

Morris,

127 F.3d at 1055, 44 USPQ2d at 1028

(“no comparable mandate in the patent statute that relates the claim scope of non-§

112 paragraph 6 claims to particular matter found in the specification”).

B.

The Term “Means” or “Step” or the Generic Placeholder Must Be Modified By

Functional Language

With respect to the second prong of this analysis, it must be clear

that the element in the claims is set forth, at least in part, by the function it

performs as opposed to the specific structure, material, or acts that perform the

function. See

York Prod., Inc. v. Central Tractor Farm & Family

Center,

99 F.3d 1568, 1574, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996)

(holding that a claim limitation containing the term “means” does not invoke

pre-AIA 35

U.S.C. 112

, sixth paragraph, if the claim limitation does not

link the term “means” to a specific function);

Caterpillar Inc. v. Detroit

Diesel Corp.,

961 F.Supp. 1249, 1255, 41 USPQ2d 1876, 1882 (N.D. Ind

, Inc. v. Central Tractor Farm & Family

Center,

99 F.3d 1568, 1574, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996)

(holding that a claim limitation containing the term “means” does not invoke

pre-AIA 35

U.S.C. 112

, sixth paragraph, if the claim limitation does not

link the term “means” to a specific function);

Caterpillar Inc. v. Detroit

Diesel Corp.,

961 F.Supp. 1249, 1255, 41 USPQ2d 1876, 1882 (N.D. Ind.

1996) (stating that

pre-AIA 35 U.S.C. 112

, sixth paragraph, “applies to functional

method claims where the element at issue sets forth a step for reaching a particular

result, but not the specific technique or procedure used to achieve the

result.”);

O.I. Corp.,

115 F.3d at 1582-83, 42 USPQ2d at 1782

(With respect to process claims, “[

pre-AIA 35 U.S.C. 112

, sixth

paragraph] is implicated only when steps

plus function

without

acts are present…. If we were to construe every process claim containing steps

described by an ‘ing’ verb, such as passing, heating, reacting, transferring, etc.,

into a step-plus-function, we would be limiting process claims in a manner never

intended by Congress.” (emphasis in original)); see also

Baran v. Medical

Device Techs., Inc.,

616 F.3d 1309, 1317, 96 USPQ2d 1057, 1063 (Fed.

Cir. 2010) (the claimed function may include the functional language that precedes

the phrase “means for.”). However, “the fact that a particular mechanism…is defined

in functional terms is not sufficient to convert a claim element containing that term

into a ‘means for performing a specified function’ within the meaning of

section

112(6)

.”

Greenberg v. Ethicon Endo-Surgery,

Inc.,

91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786 (Fed. Cir. 1996) (“detent

mechanism” defined in functional terms was not intended to invoke

35 U.S.C. 112

,

sixth paragraph); see also

Al-Site Corp. v. VSI International

Inc.,

174 F.3d 1308, 1318, 50 USPQ2d 1161, 1166–67 (Fed. Cir. 1999)

(although the claim elements “eyeglass hanger member” and “eyeglass contacting

member” include a function, these claim elements do not invoke

pre-AIA 35 U.S.C

786 (Fed. Cir. 1996) (“detent

mechanism” defined in functional terms was not intended to invoke

35 U.S.C. 112

,

sixth paragraph); see also

Al-Site Corp. v. VSI International

Inc.,

174 F.3d 1308, 1318, 50 USPQ2d 1161, 1166–67 (Fed. Cir. 1999)

(although the claim elements “eyeglass hanger member” and “eyeglass contacting

member” include a function, these claim elements do not invoke

pre-AIA 35 U.S.C.

112

, sixth paragraph, because the claims themselves contain

sufficient structural limitations for performing those functions). Also, a statement

of function appearing only in the claim preamble is generally insufficient to invoke

35

U.S.C. 112(f)

.

O.I. Corp.,

115 F.3d at 1583,

42 USPQ2d at 1782 (“[A] statement in a preamble of a result that necessarily follows

from performing a series of steps does not convert each of those steps into step-

plus-function clauses. The steps of ‘passing’ are not individually associated in the

claims with functions performed by the steps of passing.”).

The mere use of the term “means” with no associated

function rebuts the presumption that

35 U.S.C. 112(f)

is invoked. A

function must be recited within the claim limitation, but it is not necessary that a

particular format be used. Typically, the claim limitation will use the linking word

“for” to associate “means” or a generic placeholder with the function. However, other

linking words may be used, such as “so that” or “configured to”, provided it is clear

that the claim element is reciting a function. In certain circumstances, it is also

not necessary to use a linking word if other words used with “means”, or the generic

placeholder, convey the function. Such words, however, cannot convey specific

structure for performing the function or the phrase will not be treated as invoking

35

U.S.C. 112(f)

. For example, “ink delivery means”, “module

configured to deliver ink” and “means for ink delivery” could all be interpreted as

claim elements that invoke

35 U.S.C. 112(f)

. See

Signtech USA,

174 F.3d at 1356, 50 USPQ2d at 1374-75.

C

convey the function. Such words, however, cannot convey specific

structure for performing the function or the phrase will not be treated as invoking

35

U.S.C. 112(f)

. For example, “ink delivery means”, “module

configured to deliver ink” and “means for ink delivery” could all be interpreted as

claim elements that invoke

35 U.S.C. 112(f)

. See

Signtech USA,

174 F.3d at 1356, 50 USPQ2d at 1374-75.

C.

The Term “Means” or “Step” or the Generic Placeholder Must Not Be

Modified By Sufficient Structure, Material, or Acts for Achieving the Specified

Function

With respect to the third prong of this analysis, the term “means”

or “step” or the generic placeholder recited in the claim must not be modified by

sufficiently definite structure, material, or acts for achieving the specified

function. See

Seal-Flex,

172 F.3d at 849, 50 USPQ2d at 1234

(Rader, J., concurring) (“Even when a claim element uses language that generally

falls under the step-plus-function format, however,

[35 U.S.C.] 112

¶ 6 still does not apply when the claim limitation itself recites sufficient acts for

performing the specified function.”);

Envirco Corp. v. Clestra Cleanroom,

Inc.,

209 F.3d 1360, 54 USPQ2d 1449 (Fed. Cir. 2000) (holding “second

baffle means” does not invoke

35 U.S.C. 112

, sixth paragraph,

because the word “baffle” itself imparts structure and the claim further recites the

structure of the baffle);

Rodime PLC v. Seagate Technology, Inc.,

174 F.3d 1294, 1303–04, 50 USPQ2d 1429, 1435–36 (Fed. Cir. 1999) (holding

“positioning means for moving” does not invoke

35 U.S.C. 112

, sixth paragraph,

because the claim further provides a list of the structure underlying the means and

the detailed recitation of the structure for performing the moving function removes

this element from the purview of

35 U.S.C. 112

, sixth paragraph);

Cole v. Kimberly-Clark Corp.,

102 F.3d 524, 531, 41 USPQ2d

1001, 1006 (Fed. Cir. 1996) (holding “perforation means…for tearing” does not invoke

35 U.S.C

h paragraph,

because the claim further provides a list of the structure underlying the means and

the detailed recitation of the structure for performing the moving function removes

this element from the purview of

35 U.S.C. 112

, sixth paragraph);

Cole v. Kimberly-Clark Corp.,

102 F.3d 524, 531, 41 USPQ2d

1001, 1006 (Fed. Cir. 1996) (holding “perforation means…for tearing” does not invoke

35 U.S.C.

112

, sixth paragraph, because the claim describes the structure

supporting the tearing function (i.e., perforation)). In other situations, the

Federal Circuit has come to a different conclusion. See

Unidynamics Corp. v.

Automatic Prod. Int’l,

157 F.3d 1311, 1319, 48 USPQ2d 1099, 1104 (Fed.

Cir. 1998) (holding that “spring means” invokes

35 U.S.C. 112

, sixth

paragraph).

Examiners will apply

35 U.S.C.

112(f)

to a claim limitation that uses the term “means” or

generic placeholder associated with functional language, unless that term is (1)

preceded by a structural modifier, defined in the specification as a particular

structure or known by one skilled in the art, that denotes the type of structural

device (e.g., “filters”), or (2) otherwise modified by sufficient structure or

material for achieving the claimed function. Similarly, examiners will apply

35

U.S.C. 112(f)

to a claim limitation that uses the term “step

for” unless that term is modified by sufficient acts for performing the claimed

function.

A limitation will not invoke

35 U.S.C.

112(f)

if there is a structural modifier that further describes

the term “means” or the generic placeholder. For example, although a generic

placeholder like “mechanism” standing alone may invoke

35 U.S.C.

112(f)

when coupled with a function, it will not invoke

35

U.S.C. 112(f)

when it is preceded by a structural modifier

(e.g., “detent mechanism”).

Greenberg,

91 F.3d at 1583, 39 USPQ2d

at 1786 (holding that the term “detent mechanism” did not invoke

35 U.S.C

the term “means” or the generic placeholder. For example, although a generic

placeholder like “mechanism” standing alone may invoke

35 U.S.C.

112(f)

when coupled with a function, it will not invoke

35

U.S.C. 112(f)

when it is preceded by a structural modifier

(e.g., “detent mechanism”).

Greenberg,

91 F.3d at 1583, 39 USPQ2d

at 1786 (holding that the term “detent mechanism” did not invoke

35 U.S.C. 112

,

sixth paragraph because the structural modifier “detent” denotes a type of structural

device with a generally understood meaning in the mechanical arts). By contrast, a

generic placeholder (e.g., “mechanism,” “element,” “member”) coupled with a function

may invoke

35 U.S.C. 112(f)

when it is preceded by a non-structural

modifier that does not have any generally understood structural meaning in the art

(e.g., “colorant selection mechanism,” “lever moving element,” or “movable link

member”). See

Massachusetts Inst. of Tech.,

462 F.3d at 1354, 80

USPQ2d at 1231 (The claim recited use of a colorant selection mechanism, to which the

court performed a means-plus-function analysis under

pre-AIA 35 U.S.C.

112

, sixth paragraph. The court held that the term "colorant

selection", which modifies the generic term "mechanism", was not defined in the

specification, had no dictionary definition, nor any generally understood meaning in

the art, the term does not connote sufficient structure to a person of ordinary skill

in the art to avoid

pre-AIA 35 U.S.C. 112

, sixth paragraph treatment.);

Mas-Hamilton,

156 F.3d at 1214-1215, 48 USPQ2d at 1017; see

also

Williamson v. Citrix Online, LLC,

792 F.3d 1339, 1351, 115

USPQ2d 1105, 1113 (Fed. Cir. 2015) (determining that “[t]he prefix ‘distributed

learning control’ does not impart any structural significance to the term

[‘module’]”)

ucture to a person of ordinary skill

in the art to avoid

pre-AIA 35 U.S.C. 112

, sixth paragraph treatment.);

Mas-Hamilton,

156 F.3d at 1214-1215, 48 USPQ2d at 1017; see

also

Williamson v. Citrix Online, LLC,

792 F.3d 1339, 1351, 115

USPQ2d 1105, 1113 (Fed. Cir. 2015) (determining that “[t]he prefix ‘distributed

learning control’ does not impart any structural significance to the term

[‘module’]”).

To determine whether a word, term, or phrase coupled

with a function denotes structure, examiners may check whether: (1) the specification

provides a description sufficient to inform one of ordinary skill in the art that the

term denotes structure; (2) general and subject matter specific dictionaries provide

evidence that the term has achieved recognition as a noun denoting structure; and/or

(3) the prior art provides evidence that the term is an art-recognized structure to

perform the claimed function.

Ex parte Rodriguez,

92 USPQ2d 1395,

1404 (Bd. Pat. App. & Int. 2009) (precedential).

During examination, however, applicants have the

opportunity and the obligation to define their inventions precisely, including

whether a claim limitation invokes

35 U.S.C. 112(f)

. Thus, if the

term “means” or “step” or a generic placeholder is modified by sufficient structure,

material or acts for achieving the specified function, the USPTO will consider that

presumption has been rebutted and will not apply

35 U.S.C.

112(f)

until such modifying language is deleted from the claim

limitation.

It is necessary to decide on an element by element basis whether

35

U.S.C. 112(f)

applies. Not all terms in a means-plus-function

or step-plus-function clause are limited to what is disclosed in the written

description and equivalents thereof, since

35 U.S.C.

112(f)

applies only to the interpretation of the means or step

that performs the recited function. See, e.g.,

IMS Technology Inc. v. Haas

Automation Inc.,

206 F.3d 1422, 54 USPQ2d 1129 (Fed. Cir

is whether

35

U.S.C. 112(f)

applies. Not all terms in a means-plus-function

or step-plus-function clause are limited to what is disclosed in the written

description and equivalents thereof, since

35 U.S.C.

112(f)

applies only to the interpretation of the means or step

that performs the recited function. See, e.g.,

IMS Technology Inc. v. Haas

Automation Inc.,

206 F.3d 1422, 54 USPQ2d 1129 (Fed. Cir. 2000) (the

term “data block” in the phrase “means to sequentially display data block inquiries”

was not the means that caused the sequential display, and its meaning was not limited

to the disclosed embodiment and equivalents thereof). Each claim must be

independently reviewed to determine the applicability of

35 U.S.C.

112(f)

even where the application contains substantially

similar process and apparatus claims.

O.I. Corp.,

115 F.3d at

1583-1584, 42 USPQ2d at 1782 (“We understand that the steps in the method claims are

essentially in the same language as the limitations in the apparatus claim, albeit

without the ‘means for’ qualification…. Each claim must be independently reviewed in

order to determine if it is subject to the requirements of

section 112

, ¶

6. Interpretation of claims would be confusing indeed if claims that are not means-

or step- plus function were to be interpreted as if they were, only because they use

language similar to that used in other claims that are subject to this

provision.”).

II.

DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35 U.S.C.

112(f) or PRE-AIA 35 U.S.C. 112, SIXTH PARAGRAPH

35 U.S.C.

112(f)

states that a claim limitation expressed in means- (or

step-) plus-function language “shall be construed to cover the corresponding

structure…described in the specification and equivalents thereof.” “If one employs means

plus function language in a claim, one must set forth in the specification an adequate

disclosure showing what is meant by that language

S.C. 112, SIXTH PARAGRAPH

35 U.S.C.

112(f)

states that a claim limitation expressed in means- (or

step-) plus-function language “shall be construed to cover the corresponding

structure…described in the specification and equivalents thereof.” “If one employs means

plus function language in a claim, one must set forth in the specification an adequate

disclosure showing what is meant by that language. If an applicant fails to set forth an

adequate disclosure, the applicant has in effect failed to particularly point out and

distinctly claim the invention as required by the

35 U.S.C.

112(b)

[or the second paragraph of

pre-AIA section

112

].”

In re Donaldson Co.,

16 F.3d 1189, 1195,

29 USPQ2d 1845, 1850 (Fed. Cir. 1994)

(en banc)

.

A.

The Corresponding Structure Must Be Disclosed In the Specification Itself

in a Way That One Skilled In the Art Will Understand What Structure Will

Perform the Recited Function

The proper test for meeting the definiteness requirement is that the

corresponding structure (or material or acts) of a means- (or step-) plus-function

limitation must be disclosed in the specification itself in a way that one skilled in

the art will understand what structure (or material or acts) will perform the recited

function. See

Atmel Corp. v. Information Storage Devices, Inc.,

198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999). In

Atmel,

the patentee claimed an apparatus that included a “high

voltage generating means” limitation, thereby invoking

35 U.S.C. 112

,

sixth paragraph. The specification incorporated by reference a non-patent document

from a technical journal, which described a particular high voltage generating

circuit

nformation Storage Devices, Inc.,

198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999). In

Atmel,

the patentee claimed an apparatus that included a “high

voltage generating means” limitation, thereby invoking

35 U.S.C. 112

,

sixth paragraph. The specification incorporated by reference a non-patent document

from a technical journal, which described a particular high voltage generating

circuit. The Federal Circuit concluded that the title of the article in the

specification may, by itself, be sufficient to indicate to one skilled in the art the

precise structure of the means for performing the recited function, and it remanded

the case to the district court “to consider the knowledge of one skilled in the art

that indicated, based on unrefuted testimony, that the specification disclosed

sufficient structure corresponding to the high-voltage means limitation.”

Id.

at 1382, 53 USPQ2d at 1231.

If there is no disclosure of structure, material or acts for

performing the recited function, the claim fails to satisfy the requirements of

35

U.S.C. 112(b)

. The disclosure of the structure (or material or

acts) may be implicit or inherent in the specification if it would have been clear to

those skilled in the art what structure (or material or acts) corresponds to the

means- (or step-) plus-function claim limitation. See

id.

at 1380,

53 USPQ2d at 1229;

In re Dossel,

115 F.3d 942, 946-47, 42 USPQ2d

1881, 1885 (Fed. Cir. 1997). However, “[a] bare statement that known techniques or

methods can be used does not disclose structure” in the context of a means plus

function limitation.

Biomedino, LLC v. Waters Technology Corp.,

490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) (Disclosure that an

invention “may be controlled by known differential pressure, valving and control

equipment” was not a disclosure of any structure corresponding to the claimed

“control means for operating [a] valving ” and the claim was held indefinite). See

also

Budde v. Harley-Davidson, Inc.,

250 F.3d 1369, 1376, 58

USPQ2d 1801, 1806 (Fed

0 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) (Disclosure that an

invention “may be controlled by known differential pressure, valving and control

equipment” was not a disclosure of any structure corresponding to the claimed

“control means for operating [a] valving ” and the claim was held indefinite). See

also

Budde v. Harley-Davidson, Inc.,

250 F.3d 1369, 1376, 58

USPQ2d 1801, 1806 (Fed. Cir. 2001);

Cardiac Pacemakers, Inc. v. St. Jude

Med., Inc

., 296 F.3d 1106, 1115-18, 63 USPQ2d 1725, 1731-34 (Fed. Cir.

2002) (Court interpreted the language of the “third monitoring means for monitoring

the ECG signal…for activating …” to require the same means to perform both functions

and the only entity referenced in the specification that could possibly perform both

functions is the physician. The court held that excluding the physician, no structure

accomplishes the claimed dual functions. Because no structure disclosed in the

embodiments of the invention actually performs the claimed dual functions, the

specification lacks corresponding structure as required by

35 U.S.C. 112

,

sixth paragraph, and fails to comply with

35 U.S.C. 112

, second

paragraph.).

Whether a claim reciting an element in means- (or step-)

plus-function language fails to comply with

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph, because the specification does not disclose adequate structure (or

material or acts) for performing the recited function is closely related to the

question of whether the specification meets the description requirement in

35

U.S.C. 112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph. See

In re Noll,

545 F.2d 141, 149, 191 USPQ 721, 727

(CCPA 1976) (unless the means-plus-function language is itself unclear, a claim

limitation written in means-plus- function language meets the definiteness

requirement in

35

U.S.C. 112

, second paragraph, so long as the specification

meets the written description requirement in

35 U.S.C. 112

, first paragraph).

In Aristocrat Techs. Australia PTY Ltd. v

re Noll,

545 F.2d 141, 149, 191 USPQ 721, 727

(CCPA 1976) (unless the means-plus-function language is itself unclear, a claim

limitation written in means-plus- function language meets the definiteness

requirement in

35

U.S.C. 112

, second paragraph, so long as the specification

meets the written description requirement in

35 U.S.C. 112

, first paragraph).

In Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech.,

521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008), the court stated:

Enablement of a device requires only the disclosure

of sufficient information so that a person of ordinary skill in the art could make

and use the device. A section 112[(f) or pre-AIA] paragraph 6 disclosure, however,

serves the very different purpose of limiting the scope of the claim to the

particular structure disclosed, together with equivalents. … For example, in

Atmel Corp. v. Information Storage Devices, Inc.,

198 F.3d

1374, 1380[, 53 USPQ2d 1225, 1230] (Fed. Cir. 1999), the court embraced the

proposition that ‘consideration of the understanding of one skilled in the art in

no way relieves the patentee of adequately disclosing sufficient structure in the

specification.’ It is not enough for the patentee simply to state or later argue

that persons of ordinary skill in the art would know what structures to use to

accomplish the claimed function. The court in

Biomedino, LLC v. Waters

Technologies Corp.,

490 F.3d 946, 953[, 83 USPQ2d 1118, 1123] (Fed.

Cir. 2007), put the point this way: "The inquiry is whether one of skill in the

art would understand the specification itself to disclose a structure, not simply

whether that person would be capable of implementing that structure."

The invocation of

35 U.S.C.

112(f)

does not exempt an applicant from compliance with

35

U.S.C. 112(a)

and

35 U.S.C. 112(b)

or

pre-AIA 35

U.S.C. 112

, first and second paragraphs

), put the point this way: "The inquiry is whether one of skill in the

art would understand the specification itself to disclose a structure, not simply

whether that person would be capable of implementing that structure."

The invocation of

35 U.S.C.

112(f)

does not exempt an applicant from compliance with

35

U.S.C. 112(a)

and

35 U.S.C. 112(b)

or

pre-AIA 35

U.S.C. 112

, first and second paragraphs. See

Donaldson,

16 F.3d at 1195, 29 USPQ2d at 1850;

In re

Knowlton,

481 F.2d 1357, 1366, 178 USPQ 486, 493 (CCPA 1973) (“[The

sixth paragraph of section 112] cannot be read as creating an exception either to the

description requirement of the first paragraph … or to the definiteness requirement

found in the second paragraph of

section 112

. Means-plus-function

language can be used in the claims, but the claims must still accurately define the

invention.”).

Under certain limited circumstances, the written description does

not have to explicitly describe the structure (or material or acts) corresponding to

a means- (or step-) plus-function limitation to particularly point out and distinctly

claim the invention as required by

35 U.S.C. 112(b)

or

pre-AIA 35

U.S.C. 112

, second paragraph. See

Dossel,

115 F.3d at 946, 42 USPQ2d at 1885. Under proper circumstances, drawings may provide

a written description of an invention as required by

35 U.S.C. 112

.

Vas-Cath, Inc. v. Mahurkar,

935 F.2d 1555, 1565, 19 USPQ2d

1111, 1118 (Fed. Cir. 1991). Further, disclosure of structure corresponding to

a means-plus-function limitation may be implicit in the written description if it

would have been clear to those skilled in the art what structure must perform the

function recited in the means-plus-function limitation. See

Atmel Corp. v.

Information Storage Devices Inc.,

198 F.3d 1374, 1379, 53 USPQ2d 1225,

1228 (Fed. Cir

1, 1118 (Fed. Cir. 1991). Further, disclosure of structure corresponding to

a means-plus-function limitation may be implicit in the written description if it

would have been clear to those skilled in the art what structure must perform the

function recited in the means-plus-function limitation. See

Atmel Corp. v.

Information Storage Devices Inc.,

198 F.3d 1374, 1379, 53 USPQ2d 1225,

1228 (Fed. Cir. 1999) (stating that the “one skilled in the art” analysis should

apply in determining whether sufficient structure has been disclosed to support a

means-plus-function limitation);

Dossel,

115 F.3d at 946–47, 42

USPQ2d at 1885 (“Clearly, a unit which receives digital data, performs complex

mathematical computations and outputs the results to a display must be implemented by

or on a general or special purpose computer (although it is not clear why the written

description does not simply state ‘computer’ or some equivalent phrase).”).

A claim may also be indefinite when the 3-prong

analysis for determining whether the claim limitation should be interpreted under

35

U.S.C. 112(f)

is inconclusive because of ambiguous words in the

claim. After taking into consideration the language in the claims, the specification,

and how those of ordinary skill in the art would understand the language in the

claims in light of the disclosure, the examiner should make a determination regarding

whether the words in the claim recite sufficiently definite structure that performs

the claimed function. If the applicant disagrees with the examiner’s interpretation

of the claim limitation, the applicant has the opportunity during the application

process to present arguments, and amend the claim if needed, to clarify whether

35

U.S.C. 112(f)

applies.

B.

Computer-Implemented Means-Plus-Function Limitations

For a computer-implemented

35 U.S.C.

112(f)

claim limitation, the specification must disclose an

algorithm for performing the claimed specific computer function, or else the claim is

indefinite under

35 U.S.C. 112(b)

. See

Net MoneyIN, Inc. v

ess to present arguments, and amend the claim if needed, to clarify whether

35

U.S.C. 112(f)

applies.

B.

Computer-Implemented Means-Plus-Function Limitations

For a computer-implemented

35 U.S.C.

112(f)

claim limitation, the specification must disclose an

algorithm for performing the claimed specific computer function, or else the claim is

indefinite under

35 U.S.C. 112(b)

. See

Net MoneyIN, Inc. v. Verisign. Inc.,

545 F.3d 1359, 1367, 88

USPQ2d 1751, 1757 (Fed. Cir. 2008). See also

In re Aoyama,

656

F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) (“[W]hen the disclosed

structure is a computer programmed to carry out an algorithm, ‘the disclosed

structure is not the general purpose computer, but rather that special purpose

computer programmed to perform the disclosed algorithm.’”) (quoting

WMS

Gaming, Inc. v. Int’l Game Tech.,

184 F.3d 1339, 1349, 51 USPQ2d 1385,

1391 (Fed. Cir. 1999)).

In cases involving a special purpose

computer-implemented means-plus-function limitation, the Federal Circuit has

consistently required that the structure be more than simply a general purpose

computer or microprocessor and that the specification must disclose an algorithm for

performing the claimed function. See, e.g.,

Noah Systems Inc. v. Intuit

Inc.,

675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012);

Aristocrat,

521 F.3d at 1333, 86 USPQ2d at 1239.

For a computer-implemented means-plus-function claim

limitation invoking

35 U.S.C. 112(f)

the Federal

Circuit has stated that “a microprocessor can serve as structure for a

computer-implemented function only where the claimed function is ‘coextensive’ with a

microprocessor itself.”

EON Corp. IP Holdings LLC v. AT&T Mobility

LLC,

785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing

In re Katz Interactive Call Processing Patent Litigation,

639

F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011)

stated that “a microprocessor can serve as structure for a

computer-implemented function only where the claimed function is ‘coextensive’ with a

microprocessor itself.”

EON Corp. IP Holdings LLC v. AT&T Mobility

LLC,

785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing

In re Katz Interactive Call Processing Patent Litigation,

639

F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). “‘It is only in the rare

circumstances where any general-purpose computer without any special programming can

perform the function that an algorithm need not be disclosed.’”

EON

Corp.,

785 F.3d at 621, 114 USPQ2 at 1714, quoting

Ergo

Licensing, LLC v. CareFusion

303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d

1122, 1125 (Fed. Cir. 2012). “‘[S]pecial programming’ includes any functionality that

is not ‘coextensive’ with a microprocessor or general purpose computer.”

EON

Corp.,

785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted).

“Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and

‘processing’ data—the only three functions on which the Katz court vacated the

district court’s decision and remanded for the district court to determine whether

disclosure of a microprocessor was sufficient.” 785 F.3d at 622, 114 USPQ2d at 1714.

Thus, “[a] microprocessor or general purpose computer lends sufficient structure only

to basic functions of a microprocessor. All other computer-implemented functions

require disclosure of an algorithm.”

Id.,

114 USPQ2d at 1714

To claim a means for performing a specific

computer-implemented function and then to disclose only a general purpose computer as

the structure designed to perform that function amounts to pure functional claiming.

Aristocrat,

521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this

instance, the structure corresponding to a

35 U.S.C.

112(f)

claim limitation for a computer-implemented function

must include the algorithm needed to transform the general purpose computer or

microprocessor disclosed in the specification

ose computer as

the structure designed to perform that function amounts to pure functional claiming.

Aristocrat,

521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this

instance, the structure corresponding to a

35 U.S.C.

112(f)

claim limitation for a computer-implemented function

must include the algorithm needed to transform the general purpose computer or

microprocessor disclosed in the specification.

Aristocrat,

521

F.3d at 1333, 86 USPQ2d at 1239;

Finisar Corp. v. DirecTV Group,

Inc.,

523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008);

WMS Gaming, Inc. v. Int’l Game Tech.,

184 F.3d 1339, 1349, 51

USPQ2d 1385, 1391 (Fed. Cir. 1999);

Rain Computing, Inc. v. Samsung

Electronics America Co.,

989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed.

Cir. 2021).

The corresponding structure is not simply a general

purpose computer by itself but the special purpose computer as programmed to perform

the disclosed algorithm.

Aristocrat,

521 F.3d at 1333, 86 USPQ2d

at 1239. Thus, the specification must sufficiently disclose an algorithm to transform

a general purpose microprocessor to the special purpose computer. See

Aristocrat,

521 F.3d at 1338, 86 USPQ2d at 1241. (“Aristocrat

was not required to produce a listing of source code or a highly detailed description

of the algorithm to be used to achieve the claimed functions in order to satisfy

35 U.S.C. §

112

¶ 6. It was required, however, to at least disclose the

algorithm that transforms the general purpose microprocessor to a ‘special purpose

computer programmed to perform the disclosed algorithm.’” (quoting

WMS

Gaming,

184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined,

for example, as “a finite sequence of steps for solving a logical or mathematical

problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th

edition, 2002

rithm that transforms the general purpose microprocessor to a ‘special purpose

computer programmed to perform the disclosed algorithm.’” (quoting

WMS

Gaming,

184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined,

for example, as “a finite sequence of steps for solving a logical or mathematical

problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th

edition, 2002. Applicant may express the algorithm in any understandable terms

including as a mathematical formula, in prose, in a flow chart, or “in any other

manner that provides sufficient structure.”

Finisar,

523 F.3d at

1340, 86 USPQ2d at 1623; see also

Intel Corp. v. VIA Techs., Inc

.,

319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003);

In re

Dossel,

115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997);

Typhoon Touch Inc. v. Dell Inc.,

659 F.3d 1376, 1385, 100

USPQ2d 1690, 1697 (Fed. Cir. 2011);

In re Aoyama,

656 F.3d at

1306, 99 USPQ2d at 1945.

The Federal Circuit case law regarding special purpose

computer-implemented means-plus-function claims is divided into two distinct groups.

The first group includes cases in which the specification discloses no algorithm, and

the second group includes cases in which the specification does disclose an

algorithm, but an issue exists as to whether the disclosure is adequate to perform

the entire claimed function(s). The sufficiency of the algorithm is determined in

view of what one of ordinary skill in the art would understand as sufficient to

define the structure and make the boundaries of the claim understandable. See

Noah,

675 F.3d at 1313, 102 USPQ2d at 1417.

Accordingly, a rejection under

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph is appropriate if the specification discloses no corresponding algorithm

associated with a computer or microprocessor.

Aristocrat,

521 F.3d

at 1337-38, 86 USPQ2d at 1242. For example, in

Advanced Ground Information

Systems, Inc. v. Life360, Inc.,

830 F.3d 1341, 119 USPQ2d 1526 (Fed.

Cir

102 USPQ2d at 1417.

Accordingly, a rejection under

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph is appropriate if the specification discloses no corresponding algorithm

associated with a computer or microprocessor.

Aristocrat,

521 F.3d

at 1337-38, 86 USPQ2d at 1242. For example, in

Advanced Ground Information

Systems, Inc. v. Life360, Inc.,

830 F.3d 1341, 119 USPQ2d 1526 (Fed.

Cir. 2016), the Federal Circuit determined that the term "symbol generator" is a

computer-implemented means-plus- function limitation and that "[t]he specifications

of the patents-in-suit do not disclose an operative algorithm for the claim elements

reciting 'symbol generator.'" 830 F.3d at 1348-49, 119 USPQ2d at 1529-30. The Federal

Circuit upheld the district court’s determination that the term "symbol generator" is

indefinite, observing that "although the district court recognized that the

specification describes, in general terms, that symbols are generated based on the

latitude and longitude of the participants, it nonetheless determined that the

specification fails to disclose an algorithm or description as to how those symbols

are actually generated." 830 F.3d at 1349, 119 USPQ2d at 1530 (internal quotation

marks and alterations omitted). See also,

Blackboard, Inc. v. Desire2Learn,

Inc.,

574 F.3d 1371, 1382-83, 91 USPQ2d 1481, 1490-91 (Fed. Cir. 2009)

(concluding that the description of a server computer’s “access control manager”

software feature was insufficient disclosure of corresponding structure to support

the computer-implemented “means for assigning” limitation because “what the patent

calls the ‘access control manager’ is simply an abstraction that describes the

function of controlling access to course materials … [b]ut how it does so is left

undisclosed.”);

Aristocrat,

521 F.3d at 1334-35, 86 USPQ2d at 1240

(explaining that “the [patent’s] description of the embodiments is simply a

description of the outcome of the claimed functions, not a description of the

structure, i.e., the computer programmed to execu

er’ is simply an abstraction that describes the

function of controlling access to course materials … [b]ut how it does so is left

undisclosed.”);

Aristocrat,

521 F.3d at 1334-35, 86 USPQ2d at 1240

(explaining that “the [patent’s] description of the embodiments is simply a

description of the outcome of the claimed functions, not a description of the

structure, i.e., the computer programmed to execute a particular algorithm”).

Mere reference to a general purpose computer with

appropriate programming without providing an explanation of the appropriate

programming, or simply reciting “software” without providing detail about the means

to accomplish a specific software function, would not be an adequate disclosure of

the corresponding structure to satisfy the requirements of

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph.

Aristocrat,

521 F.3d at 1334, 86 USPQ2d at 1239;

Finisar,

523 F.3d at 1340-41, 86 USPQ2d at 1623. In addition,

merely referencing a specialized computer (e.g., a “bank computer”), some undefined

component of a computer system (e.g., “access control manager”), “logic,” “code,” or

elements that are essentially a black box designed to perform the recited function,

will not be sufficient because there must be some explanation of how the computer or

the computer component performs the claimed function.

Blackboard, Inc. v.

Desire2Learn, Inc.,

574 F.3d 1371, 1383-85, 91 USPQ2d 1481, 1491-93

(Fed. Cir. 2009);

Net MoneyIN, Inc. v. VeriSign, Inc.,

545 F.3d

1359, 1366-67, 88 USPQ2d 1751, 1756-57 (Fed. Cir. 2008);

Ex parte

Rodriguez,

92 USPQ2d 1395, 1405-06 (Bd. Pat. App. & Inter. 2009).

If the specification explicitly discloses an

algorithm, the sufficiency of the disclosure of the algorithm must be determined in

light of the level of ordinary skill in the art.

Aristocrat,

521

F.3d at 1337, 86 USPQ2d at 1241;

AllVoice Computing PLC v. Nuance Commc’ns,

Inc.,

504 F.3d 1236, 1245, 84 USPQ2d 1886, 1893 (Fed. Cir

parte

Rodriguez,

92 USPQ2d 1395, 1405-06 (Bd. Pat. App. & Inter. 2009).

If the specification explicitly discloses an

algorithm, the sufficiency of the disclosure of the algorithm must be determined in

light of the level of ordinary skill in the art.

Aristocrat,

521

F.3d at 1337, 86 USPQ2d at 1241;

AllVoice Computing PLC v. Nuance Commc’ns,

Inc.,

504 F.3d 1236, 1245, 84 USPQ2d 1886, 1893 (Fed. Cir. 2007);

Intel Corp.,

319 F.3d at 1366-67, 65 USPQ2d 1934, 1941

(knowledge of a person of ordinary skill in the art can be used to make clear how to

implement a disclosed algorithm). The examiner should determine whether one skilled

in the art would know how to program the computer to perform the necessary steps

described in the specification (i.e., the invention is enabled), and that the

inventor was in possession of the invention (i.e., the invention meets the written

description requirement). Thus, the specification must sufficiently disclose an

algorithm to transform a general purpose microprocessor to a special purpose computer

so that a person of ordinary skill in the art can implement the disclosed algorithm

to achieve the claimed function.

Aristocrat,

521 F.3d at 1338, 86

USPQ2d at 1242.

The sufficiency of the algorithm is determined in

view of what one of ordinary skill in the art would understand as sufficient to

define the structure and make the boundaries of the claim understandable. For

example, in

Williamson,

the Federal Circuit found that the term

“distributed learning control module” is a means-plus- function limitation that

performs three specialized functions (

i.e.,

“receiving,”,

“relaying,” and “coordinating”), which “must be implemented in a special purpose

computer.”

Williamson,

792 F.3d at 1351-52, 115 USPQ2d at 1113.

The Federal Circuit explained that “[w]here there are multiple claimed functions, as

we have here, the [specification] must disclose adequate corresponding structure to

perform all of the claimed functions.”

Id.,

115 USPQ2d at 1115

s (

i.e.,

“receiving,”,

“relaying,” and “coordinating”), which “must be implemented in a special purpose

computer.”

Williamson,

792 F.3d at 1351-52, 115 USPQ2d at 1113.

The Federal Circuit explained that “[w]here there are multiple claimed functions, as

we have here, the [specification] must disclose adequate corresponding structure to

perform all of the claimed functions.”

Id.,

115 USPQ2d at 1115.

Yet the Federal Circuit determined that the specification “fails to disclose any

structure corresponding to the ‘coordinating’ function.”

Id.

at

1354, 115 USPQ2d at 1115. Specifically, the Federal Circuit found no “disclosure of

an algorithm corresponding to the claimed ‘coordinating’ function,” concluding that

the figures in the specification relied upon by patentee as disclosing the required

algorithm, instead describe “a presenter display interface” and not an algorithm

corresponding to the claimed “coordinating” function.

Id.

at

1353-54, 115 USPQ2d at 1114-15. Accordingly, the Federal Circuit affirmed the

district court’s judgment that claims containing the “distributed learning control

module” limitation are invalid for indefiniteness under

35 U.S.C.

112(b)

.

Id.

at 1354, 115 USPQ2d at 1115. See

also

Noah,

675 F.3d at 1319, 102 USPQ2d at 1421 (holding that

“[c]omputer- implemented means-plus- function claims are indefinite unless the

specification discloses an algorithm to perform the function associated with the

limitation[,]” and that “[w]hen the specification discloses an algorithm that only

accomplishes one of multiple identifiable functions performed by a means-plus-

function limitation, the specification is treated as if it disclosed no

algorithm.”).

Similarly in

Media Rights Technologies, Inc.

v. Capital One Financial Corp.,

800 F.3d 1366, 1374, 116 USPQ2d 1144,

1149 (Fed. Cir

on associated with the

limitation[,]” and that “[w]hen the specification discloses an algorithm that only

accomplishes one of multiple identifiable functions performed by a means-plus-

function limitation, the specification is treated as if it disclosed no

algorithm.”).

Similarly in

Media Rights Technologies, Inc.

v. Capital One Financial Corp.,

800 F.3d 1366, 1374, 116 USPQ2d 1144,

1149 (Fed. Cir. 2015), the Federal Circuit determined that the term ‘‘compliance

mechanism’’ is a means-plus-function limitation that performs four computer

implemented functions (

i.e.,

"controlling data output by diverting

a data pathway; monitoring the controlled data pathway; managing an output path by

diverting a data pathway; and stopping the play of media content"). The Federal

Circuit determined “that the specification fails to adequately disclose the structure

to perform all four of [the ‘compliance mechanism’s’] functions” and affirmed the

district court’s decision that the “compliance mechanism” limitation is indefinite.

Id.

at 1375, 116 USPQ2d at 1150. Specifically, the Federal

Circuit found that “the specification fails to disclose an operative algorithm for

both the ‘controlling data output’ and ‘managing output path’ functions[,]” which

‘‘both require diverting a data pathway[,]” because the recited C++ source code in

the specification “only returns various error messages” and “does not, accordingly,

explain how to perform the diverting function[.]”

Id.

at 1374–75,

116 USPQ2d at 1149-50. “Additionally, the specification does not disclose sufficient

structure for the ‘monitoring’ function[,]” because the disclosed “set of rules . . .

which the ‘copyright compliance mechanism’ applies to monitor the data pathway to

ensure there is no unauthorized recording of electronic media . . . provides no

detail about the rules themselves or how the ‘copyright compliance mechanism’

determines whether the rules are being enforced.”

Id.

at 1375, 116

USPQ2d at 1150

re for the ‘monitoring’ function[,]” because the disclosed “set of rules . . .

which the ‘copyright compliance mechanism’ applies to monitor the data pathway to

ensure there is no unauthorized recording of electronic media . . . provides no

detail about the rules themselves or how the ‘copyright compliance mechanism’

determines whether the rules are being enforced.”

Id.

at 1375, 116

USPQ2d at 1150.

In several Federal Circuit cases, the patentees argued

that the requirement for the disclosure of an algorithm can be avoided if one of

ordinary skill in the art is capable of writing the software to convert a general

purpose computer to a special purpose computer to perform the claimed function. See,

e.g.,

Blackboard,

574 F.3d at 1385, 91 USPQ2d at 1493;

Biomedino,

490 F.3d at 952, 83 USPQ2d at 1123;

Atmel

Corp.,

198 F.3d at 1380, 53 USPQ2d at 1229. Such argument was found to

be unpersuasive because the understanding of one skilled in the art does not relieve

the patentee of the duty to disclose sufficient structure to support

means-plus-function claim terms.

Blackboard,

574 F.3d at 1385, 91

USPQ2d at 1493 (“A patentee cannot avoid providing specificity as to structure simply

because someone of ordinary skill in the art would be able to devise a means to

perform the claimed function.”);

Atmel Corp.,

198 F.3d at 1380, 53

USPQ2d at 1229 (“[C]onsideration of the understanding of one skilled in the art in no

way relieves the patentee of adequately disclosing sufficient structure in the

specification.”). The specification must explicitly disclose the algorithm for

performing the claimed function, and simply reciting the claimed function in the

specification will not be a sufficient disclosure for an algorithm which, by

definition, must contain a sequence of steps

tanding of one skilled in the art in no

way relieves the patentee of adequately disclosing sufficient structure in the

specification.”). The specification must explicitly disclose the algorithm for

performing the claimed function, and simply reciting the claimed function in the

specification will not be a sufficient disclosure for an algorithm which, by

definition, must contain a sequence of steps.

Blackboard,

574 F.3d

at 1384, 91 USPQ2d at 1492 (stating that language that simply describes the function

to be performed describes an outcome, not a means for achieving that outcome);

Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002; see also

Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc.,

355 Fed.

App'x 389, 394-95 (Fed. Cir. 2009) (holding that implicit or inherent disclosure of a

class of algorithms for performing the claimed functions is not sufficient, and the

purported “one-step” algorithm is not an algorithm at all) (unpublished).

EON Corp. IP Holdings LLC v. AT&T Mobility LLC,

785 F.3d

616, 623, 114 USPQ2d 1711, 1716 (Fed. Cir. 2015) (disagreeing “that a microprocessor

can serve as sufficient structure for a software function if a person of ordinary

skill in the art could implement the software function");

Blackboard,

574 F.3d at 1385, 91 USPQ2d at 1492 (explaining

that “[t]he fact that an ordinarily skilled artisan might be able to design a program

to create an access control list based on the system users’ predetermined roles goes

to enablement[,]” whereas “[t]he question before us is whether the specification

contains a sufficiently precise description of the ‘corresponding structure’ to

satisfy [pre-AIA]

section 112

, paragraph 6, not whether a person of skill in the

art could devise some means to carry out the recited function”).

Often the supporting disclosure for a

computer-implemented invention discusses the implementation of the functionality of

the invention through hardware, software, or a combination of both

iciently precise description of the ‘corresponding structure’ to

satisfy [pre-AIA]

section 112

, paragraph 6, not whether a person of skill in the

art could devise some means to carry out the recited function”).

Often the supporting disclosure for a

computer-implemented invention discusses the implementation of the functionality of

the invention through hardware, software, or a combination of both. In this

situation, a question can arise as to which mode of implementation supports the

means-plus-function limitation. The language of

35 U.S.C.

112(f)

requires that the recited “means” for performing the

specified function shall be construed to cover the corresponding “structure or

material” described in the specification and equivalents thereof. Therefore, by

choosing to use a means-plus-function limitation and invoke

35 U.S.C.

112(f)

applicant limits that claim limitation to the disclosed

structure, i.e., implementation by hardware or the combination of hardware and

software, and equivalents thereof. Therefore, the examiner should not construe the

limitation as covering pure software implementation.

However, if there is no corresponding structure

disclosed in the specification (i.e., the limitation is only supported by software

and does not correspond to an algorithm and the computer or microprocessor programmed

with the algorithm), the limitation should be deemed indefinite as discussed above,

and the claim should be rejected under

35 U.S.C. 112(b)

or

pre-AIA 35

U.S.C. 112

, second paragraph. It is important to remember that

claims must be interpreted as a whole; so, a claim that includes a

means-plus-function limitation that corresponds to software

per se

(and is thus indefinite for lacking structural support in the specification) is not

necessarily directed as a whole to software per se unless the claim lacks other

structural limitations

)

or

pre-AIA 35

U.S.C. 112

, second paragraph. It is important to remember that

claims must be interpreted as a whole; so, a claim that includes a

means-plus-function limitation that corresponds to software

per se

(and is thus indefinite for lacking structural support in the specification) is not

necessarily directed as a whole to software per se unless the claim lacks other

structural limitations.

As noted below in subsection III., if it is unclear

whether there is sufficient supporting structure or whether the algorithm is adequate

to perform the entire claimed function, it is appropriate to reject the claim under

35

U.S.C. 112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph.

When a claim containing a computer-implemented

35

U.S.C. 112(f)

claim limitation is found to be indefinite under

35

U.S.C. 112(b)

for failure to disclose sufficient corresponding

structure (e.g., the computer and the algorithm) in the specification that performs

the entire claimed function, it will also lack written description under

35

U.S.C. 112(a)

. See

MPEP § 2163.03

, subsection VI.

Examiners should further consider whether the disclosure contains sufficient

information regarding the subject matter of the claims as to enable one skilled in

the pertinent art to make and use the full scope of the claimed invention in

compliance with the enablement requirement of

35 U.S.C.

112(a)

. See

MPEP § 2161.01

, subsection III, and

MPEP §

2164.08

.

C.

The Supporting Disclosure Clearly Links or Associates the Disclosed

Structure, Material, or Acts to the Claimed Function

The structure disclosed in the written description of

the specification is the corresponding structure only if the written description of

the specification or the prosecution history

clearly links or associates

that structure to the function recited in a means- (or step-) plus-function claim

limitation under

35 U.S.C. 112(f)

or

pre-AIA 35

U.S.C. 112

, sixth paragraph. See

B. Braun Medical

Inc., v. Abbott Laboratories,

124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900

(Fed. Cir. 1997)

orresponding structure only if the written description of

the specification or the prosecution history

clearly links or associates

that structure to the function recited in a means- (or step-) plus-function claim

limitation under

35 U.S.C. 112(f)

or

pre-AIA 35

U.S.C. 112

, sixth paragraph. See

B. Braun Medical

Inc., v. Abbott Laboratories,

124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900

(Fed. Cir. 1997). The requirement that a particular structure be clearly linked with

the claimed function in order to qualify as corresponding structure is the

quid pro quo

for the convenience of employing

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph, and is also supported by the requirement of

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph, that an invention must be particularly pointed out and distinctly claimed.

See

Medical Instrumentation & Diagnostics Corp. v. Elekta AB,

344 F.3d 1205, 1211, 68 USPQ2d 1263, 1268 (Fed. Cir. 2003). For a means- (or step-)

plus- function claim limitation that invokes

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph, a rejection under

35 U.S.C. 112(b)

or

pre-AIA 35

U.S.C. 112

, second paragraph, is appropriate if one of ordinary

skill in the art cannot identify what structure, material, or acts disclosed in the

written description of the specification perform the claimed function.

III.

DETERMINING 35 U.S.C. 112(b) or PRE-AIA 35 U.S.C. 112 SECOND PARAGRAPH COMPLIANCE

WHEN 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112 SIXTH PARAGRAPH IS INVOKED

Once the examiner determines that a claim limitation is a

means-plus-function limitation invoking

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C.

112

, sixth paragraph, the examiner should determine the claimed

function and then review the written description of the specification to determine

whether the corresponding structure, material, or acts that perform the claimed function

are disclosed. Note that drawings may provide a written description of an invention as

required by

35 U.S.C.

112

. See

Vas-Cath Inc. v

112(f)

or

pre-AIA 35 U.S.C.

112

, sixth paragraph, the examiner should determine the claimed

function and then review the written description of the specification to determine

whether the corresponding structure, material, or acts that perform the claimed function

are disclosed. Note that drawings may provide a written description of an invention as

required by

35 U.S.C.

112

. See

Vas-Cath Inc. v. Mahurkar,

935 F.2d

1555, 1565, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). The corresponding structure,

material, or acts may be disclosed in the original drawings, figures, tables, or

sequence listing. However, the corresponding structure, material, or acts cannot include

any structure, material, or acts disclosed only in the material incorporated by

reference or a prior art reference. See

Pressure Prods. Med. Supplies, Inc. v.

Greatbatch Ltd.,

599 F.3d 1308, 1317, 94 USPQ2d 1261, 1267 (Fed. Cir. 2010)

(stating, “[s]imply mentioning prior art references in a patent does not suffice as a

specification description to give the patentee outright claim to all of the structures

disclosed in those references.”);

Atmel Corp. v. Info. Storage Devices,

Inc.,

198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999). The

disclosure must be reviewed from the point of view of one skilled in the relevant art to

determine whether that person would understand the written description to disclose the

corresponding structure, material, or acts.

Tech. Licensing Corp. v. Videotek,

Inc.,

545 F.3d 1316, 1338, 88 USPQ2d 1865, 1879 (Fed. Cir. 2008);

Med. Instrumentation & Diagnostics Corp. v. Elekta AB,

344

F.3d 1205, 1211-12, 68 USPQ2d 1263, 1269 (Fed. Cir. 2003). To satisfy the definiteness

requirement under

35 U.S.C. 112(b)

or

35 U.S.C.

112

, second paragraph, the written description must clearly link

or associate the corresponding structure, material, or acts to the claimed function.

Telcordia Techs., Inc. v. Cisco Systems, Inc.,

612 F.3d 1365,

1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under

35 U.S.C

68 USPQ2d 1263, 1269 (Fed. Cir. 2003). To satisfy the definiteness

requirement under

35 U.S.C. 112(b)

or

35 U.S.C.

112

, second paragraph, the written description must clearly link

or associate the corresponding structure, material, or acts to the claimed function.

Telcordia Techs., Inc. v. Cisco Systems, Inc.,

612 F.3d 1365,

1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph is appropriate if the written description fails to link or associate the

disclosed structure, material, or acts to the claimed function, or if there is no

disclosure (or insufficient disclosure) of structure, material, or acts for performing

the claimed function.

Donaldson,

16 F.3d at 1195, 29 USPQ2d at 1850.

A bare statement that known techniques or methods can be used would not be a sufficient

disclosure to support a means-plus-function limitation.

Biomedino, LLC v.

Waters Techs. Corp.,

490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir.

2007).

A rejection under

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph may be appropriate in the following situations when examining

means-plus-function claim limitations under

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C.

112

, sixth paragraph:

(1) when it is unclear whether a claim limitation

invokes

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph;

(2) when

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph is invoked and there is no disclosure or there is insufficient

disclosure of structure, material, or acts for performing the claimed function;

and/or

r

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C.

112

, sixth paragraph:

(1) when it is unclear whether a claim limitation

invokes

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph;

(2) when

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph is invoked and there is no disclosure or there is insufficient

disclosure of structure, material, or acts for performing the claimed function;

and/or

(3) when

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph is invoked and the supporting disclosure fails to clearly link or

associate the disclosed structure, material, or acts to the claimed function.

A claim may be indefinite when the 3-prong analysis for

determining whether the claim limitation should be interpreted under

35 U.S.C.

112(f)

is inconclusive because of ambiguous words in the claim.

After taking into consideration the language in the claims, the specification, and how

those of ordinary skill in the art would understand the language in the claims in light

of the disclosure, the examiner should make a determination regarding whether the words

in the claim recite sufficiently definite structure that performs the claimed function.

If the applicant disagrees with the examiner’s interpretation of the claim limitation,

the applicant has the opportunity during the examination process to present arguments,

and amend the claim if needed, to clarify whether

35 U.S.C.

112(f)

applies.

When the examiner cannot identify the corresponding

structure, material, or acts, a rejection under

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph should be made. In some cases, a requirement for information under

37 CFR

1.105

may be made to require the identification of the

corresponding structure, material, or acts. See

MPEP § 704.11(a)

, Example R. If a

requirement for information under

37 CFR 1.105

is made and the

applicant states that the applicant lacks such information or the reply does not

identify the corresponding structure, material, or acts, a rejection under

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C

37 CFR

1.105

may be made to require the identification of the

corresponding structure, material, or acts. See

MPEP § 704.11(a)

, Example R. If a

requirement for information under

37 CFR 1.105

is made and the

applicant states that the applicant lacks such information or the reply does not

identify the corresponding structure, material, or acts, a rejection under

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph should be made. For more information, see

MPEP § 704.12

(“Replies to requirements for information must be complete and filed within the time

period set including any extensions. Failure to reply within the time period set will

result in the abandonment of the application.”).

If the written description sets forth the corresponding

structure, material, or acts in compliance with

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph, the claim limitation must “be construed to cover the corresponding structure,

material, or acts described in the specification and equivalents thereof.”

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph. However, functional limitations that are not recited in the claim, or

structural limitations from the written description that are unnecessary to perform the

claimed function, cannot be imported into the claim.

Welker Bearing,

550 F.3d 1090, 1097, 89 USPQ2d 1289, 1294 (Fed. Cir.2008);

Wenger Mfg., Inc. v.

Coating Mach. Sys., Inc.,

239 F.3d 1225, 1233, 57 USPQ2d 1679, 1685 (Fed.

Cir. 2001).

The following guidance is provided to determine whether applicant has

complied with the requirements of

35 U.S.C. 112(b)

or

pre-AIA 35 U.S.C.

112

, second paragraph, when

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C

the claim.

Welker Bearing,

550 F.3d 1090, 1097, 89 USPQ2d 1289, 1294 (Fed. Cir.2008);

Wenger Mfg., Inc. v.

Coating Mach. Sys., Inc.,

239 F.3d 1225, 1233, 57 USPQ2d 1679, 1685 (Fed.

Cir. 2001).

The following guidance is provided to determine whether applicant has

complied with the requirements of

35 U.S.C. 112(b)

or

pre-AIA 35 U.S.C.

112

, second paragraph, when

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph, is invoked:

(A) If the corresponding structure, material or acts are described in

the specification in specific terms (e.g., an emitter-coupled voltage comparator),

are linked to or associated with the claimed function and one skilled in the art

could identify the structure, material or acts from that description as being

adequate to perform the claimed function, then the requirements of

35

U.S.C. 112(b)

and

(f)

or

pre-AIA 35

U.S.C. 112

, second and sixth paragraphs and are satisfied.

See

Atmel,

198 F.3d at 1382, 53 USPQ2d 1231.

(B) If the corresponding structure, material or acts are described in

the specification in broad generic terms and the specific details of which are

incorporated by reference to another document (e.g., attachment means disclosed in

U.S. Patent No. X, which is hereby incorporated by reference, or a comparator as

disclosed in the Y article, which is hereby incorporated by reference), Office

personnel must review the description in the specification, without relying on any

material from the incorporated document, and apply the

"one skilled in the art"

porated by reference to another document (e.g., attachment means disclosed in

U.S. Patent No. X, which is hereby incorporated by reference, or a comparator as

disclosed in the Y article, which is hereby incorporated by reference), Office

personnel must review the description in the specification, without relying on any

material from the incorporated document, and apply the

"one skilled in the art"

analysis to

determine whether one skilled in the art could identify the corresponding

structure (or material or acts) for performing the recited function to satisfy the

definiteness requirement of

35 U.S.C. 112(b)

or

pre-AIA 35

U.S.C. 112

, second paragraph. See

Default Proof

Credit Card System, Inc. v. Home Depot U.S.A., Inc.,

412 F.3d 1291,

75 USPQ2d 1116 (Fed. Cir. 2005) (“The inquiry under [35 U.S.C.] § 112, ¶ 2, does

not turn on whether a patentee has ‘incorporated by reference’ material into the

specification relating to structure, but instead asks first ‘whether structure is

described in the specification, and, if so, whether one skilled in the art would

identify the structure from that description.’”).

(1) If one skilled in the art would be able to identify the

structure, material or acts from the description in the specification for

performing the recited function, then the requirements of

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

,

second paragraph, are satisfied. See

Atmel Corp.

198 F.3d

at 1379, 53 USPQ2d at 1228 (stating that the “one skilled in the art”

analysis should apply in determining whether sufficient structure has been

disclosed to support a means-plus-function limitation). See also

Dossel,

115 F.3d at 946-47, 42 USPQ2d at 1885 (The

function recited in the means-plus-function limitation involved

"reconstructing"

data. The issue was whether the structure underlying this

"reconstructing"

function was adequately described in the written description to satisfy

35 U.S.C. 112(b)

or

pre-AIA

35 U.S.C. 112

, second paragraph. The court stated that

us-function limitation). See also

Dossel,

115 F.3d at 946-47, 42 USPQ2d at 1885 (The

function recited in the means-plus-function limitation involved

"reconstructing"

data. The issue was whether the structure underlying this

"reconstructing"

function was adequately described in the written description to satisfy

35 U.S.C. 112(b)

or

pre-AIA

35 U.S.C. 112

, second paragraph. The court stated that

"[n]either the written description

nor the claims uses the magic word ‘computer,’ nor do they quote computer

code that may be used in the invention. Nevertheless, when the written

description is combined with claims 8 and 9, the disclosure satisfies the

requirements of

Section 112

, Para.

2."

The court concluded that based on the specific

facts of the case, one skilled in the art would recognize the structure for

performing the

"reconstructing"

function since

"a unit which receives digital data, performs complex

mathematical computations and outputs the results to a display must be

implemented by or on a general or special purpose

computer."

).

(2) If one skilled in the art would

not

be able to identify the structure, material or acts from description in the

specification for performing the recited function, then applicant will be

required to amend the specification to contain the material incorporated by

reference, including the clear link or associated structure, material or

acts to the function recited in the claim. See

37 CFR

1.57(d)(3)

. Applicant should not be required to insert

all of the subject matter described in the entire referenced document into

the specification. To maintain a concise specification, applicant should

only include the relevant portions of the referenced document that

correspond to the means- (or step-) plus-function limitation.

IV.

DETERMINING WHETHER 35 U.S.C. 112(a) or PRE-AIA 35 U.S.C. 112, FIRST PARAGRAPH

SUPPORT EXISTS

A means- (or step-) plus-function limitation that is

found to be indefinite under

35 U.S.C

ment into

the specification. To maintain a concise specification, applicant should

only include the relevant portions of the referenced document that

correspond to the means- (or step-) plus-function limitation.

IV.

DETERMINING WHETHER 35 U.S.C. 112(a) or PRE-AIA 35 U.S.C. 112, FIRST PARAGRAPH

SUPPORT EXISTS

A means- (or step-) plus-function limitation that is

found to be indefinite under

35 U.S.C. 112(b)

based on failure of

the specification to disclose corresponding structure, material or act that performs the

entire claimed function also lacks adequate written description and may not be

sufficiently enabled to support the full scope of the claim. The principal function of

claims is to provide notice of the boundaries of the right to exclude by defining the

limits of the invention, and means-plus-function claims rely on the disclosure to define

those limits. Accordingly, an inadequate disclosure may give rise to both an

indefiniteness rejection for a means-plus-function limitation and a failure to satisfy

the written description and enablement requirements of

section

112(a)

or

pre-AIA section 112

, first

paragraph.

When a claim containing a computer-implemented

35 U.S.C.

112(f)

claim limitation is found to be indefinite under

35 U.S.C.

112(b)

for failure to disclose sufficient corresponding structure

(e.g., the computer and the algorithm) in the specification that performs the entire

claimed function, it will also lack written description under

section

112(a)

. See

MPEP § 2163.03

, subsection VI.

Examiners should further consider whether the disclosure contains sufficient information

regarding the subject matter of the claims as to enable one skilled in the pertinent art

to make and use the full scope of the claimed invention in compliance with the

enablement requirement of

section 112(a)

. See

MPEP §

2161.01

, subsection III, and

MPEP § 2164.08

12(a)

. See

MPEP § 2163.03

, subsection VI.

Examiners should further consider whether the disclosure contains sufficient information

regarding the subject matter of the claims as to enable one skilled in the pertinent art

to make and use the full scope of the claimed invention in compliance with the

enablement requirement of

section 112(a)

. See

MPEP §

2161.01

, subsection III, and

MPEP § 2164.08

.

The Federal Circuit has recognized the problem of

providing a sufficient disclosure for functional claiming, particularly with generic

claim language, explaining that “The problem is especially acute with genus claims that

use functional language to define the boundaries of a claimed genus. In such a case, the

functional claim may simply claim a desired result, and may do so without describing

species that achieve that result. But the specification must demonstrate that the

applicant [inventor] has made a generic invention that achieves the claimed result and

do so by showing that the applicant [inventor] has invented species sufficient to

support a claim to the functionally-defined genus.”

Ariad Pharmaceuticals Inc.

v. Eli & Lilly Co.,

598 F.3d 1336, 1349, 94 USPQ2d 1161, 1171 (Fed.

Cir. 2010)

(en banc)

.

Thus, the means- (or step-) plus- function claim must

still be analyzed to determine whether there exists corresponding adequate support for

such claim limitation under

35 U.S.C. 112(a)

or

pre-AIA 35 U.S.C.

112

, first paragraph. In considering whether there is

35 U.S.C.

112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph support for the claim limitation, the examiner must consider whether the

specification describes the claimed invention in sufficient detail to establish that the

inventor or joint inventor(s) had possession of the claimed invention as of the

application's filing date

pre-AIA 35 U.S.C.

112

, first paragraph. In considering whether there is

35 U.S.C.

112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph support for the claim limitation, the examiner must consider whether the

specification describes the claimed invention in sufficient detail to establish that the

inventor or joint inventor(s) had possession of the claimed invention as of the

application's filing date. Additionally, any analysis of whether a particular claim is

supported by the disclosure in an application requires a determination of whether that

disclosure, when filed, contained sufficient information regarding the subject matter of

the claim as to enable one skilled in the pertinent art to make and use the claimed

invention. This enablement requirement of

35 U.S.C. 112(a)

is separate and

distinct from the written description requirement.

Ariad,

598 F.3d at

1342, 94 USPQ2d at 1165. The enablement requirement serves a different purpose than the

written description requirement in that it ensures that the invention is communicated to

the interested public in a meaningful way. See

MPEP § 2164

. In considering whether

there is

35 U.S.C. 112

, para. 1 support for the claim limitation, the examiner must

consider not only the original disclosure contained in the summary and detailed

description of the invention portions of the specification, but also the original

claims, abstract, and drawings. See

In re Mott,

539 F.2d 1291, 1299,

190 USPQ 536, 542–43 (CCPA 1976) (claims);

In re Anderson,

471 F.2d

1237, 1240, 176 USPQ 331, 333 (CCPA 1973) (claims);

Hill-Rom Co. v. Kinetic

Concepts, Inc.,

209 F.3d 1337, 54 USPQ2d 1437 (Fed. Cir. 2000)

(unpublished) (abstract);

In re Armbruster,

512 F.2d 676, 678–79, 185

USPQ 152, 153–54 (CCPA 1975) (abstract);

Anderson,

471 F.2d at 1240,

176 USPQ at 333 (abstract);

Vas-Cath Inc. v. Mahurkar,

935 F.2d 1555,

1564, 19 USPQ2d 1111, 1117 (drawings);

In re Wolfensperger,

302 F.2d

950, 955–57, 133 USPQ 537, 541– 43 (CCPA 1962) (drawings)

c

Concepts, Inc.,

209 F.3d 1337, 54 USPQ2d 1437 (Fed. Cir. 2000)

(unpublished) (abstract);

In re Armbruster,

512 F.2d 676, 678–79, 185

USPQ 152, 153–54 (CCPA 1975) (abstract);

Anderson,

471 F.2d at 1240,

176 USPQ at 333 (abstract);

Vas-Cath Inc. v. Mahurkar,

935 F.2d 1555,

1564, 19 USPQ2d 1111, 1117 (drawings);

In re Wolfensperger,

302 F.2d

950, 955–57, 133 USPQ 537, 541– 43 (CCPA 1962) (drawings).

Merely restating a function associated with a

means-plus-function limitation is insufficient to provide the corresponding structure

for definiteness. See, e.g.,

Noah,

675 F.3d at 1317, 102 USPQ2d at

1419;

Blackboard,

574 F.3d at 1384, 91 USPQ2d at 1491;

Aristocrat,

521 F.3d at 1334, 86 USPQ2d at 1239. It follows

therefore that such a mere restatement of function in the specification without more

description of the means that accomplish the function would also likely fail to provide

adequate written description under

section 112(a)

or

pre-AIA section

112

, first paragraph.

37 CFR

1.75(d)(1)

provides, in part, that “the terms and phrases used in

the claims must find clear support or antecedent basis in the description so that the

meaning of the terms in the claims may be ascertainable by reference to the

description.” In the situation in which the written description only implicitly or

inherently sets forth the structure, materials, or acts corresponding to a means- (or

step-) plus-function, and the examiner concludes that one skilled in the art would

recognize what structure, materials, or acts perform the function recited in a means-

(or step-) plus-function, the examiner should either: (A) have the applicant clarify the

record by amending the written description such that it expressly recites what

structure, materials, or acts perform the function recited in the claim element; or (B)

state on the record what structure, materials, or acts perform the function recited in

the means- (or step-) plus-function limitation

n a means-

(or step-) plus-function, the examiner should either: (A) have the applicant clarify the

record by amending the written description such that it expressly recites what

structure, materials, or acts perform the function recited in the claim element; or (B)

state on the record what structure, materials, or acts perform the function recited in

the means- (or step-) plus-function limitation. Even if the disclosure implicitly sets

forth the structure, materials, or acts corresponding to a means- (or step-)

plus-function claim element in compliance with

35 U.S.C.

112(a)

and

(b)

or

pre-AIA 35 U.S.C.

112

, first and second paragraphs, the USPTO may still require the

applicant to amend the specification pursuant to

37 CFR 1.75(d)

and

MPEP

§ 608.01(o)

to explicitly state, with reference to the terms

and phrases of the claim element, what structure, materials, or acts perform the

function recited in the claim element in a manner that does not add prohibited new

matter to the specification. See

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C.

112

, sixth paragraph (“An 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.” (emphasis added)); see also

B. Braun Medical,

124 F.3d at 1424, 43 USPQ2d at 1900 (holding

that “pursuant to this provision [

35 U.S.C. 112,

sixth paragraph],

structure disclosed in the specification is ‘corresponding’ structure only if the

specification or prosecution history clearly links or associates that structure to the

function recited in the claim. This duty to link or associate structure to function is

the

quid pro quo

for the convenience of employing

112

, paragraph

6.”);

Medical Instrumentation and Diagnostic Corp. v. Elekta AB,

344

F.3d 1205, 1218, 68 USPQ2d 1263, 1268 (Fed. Cir

on is ‘corresponding’ structure only if the

specification or prosecution history clearly links or associates that structure to the

function recited in the claim. This duty to link or associate structure to function is

the

quid pro quo

for the convenience of employing

112

, paragraph

6.”);

Medical Instrumentation and Diagnostic Corp. v. Elekta AB,

344

F.3d 1205, 1218, 68 USPQ2d 1263, 1268 (Fed. Cir. 2003) (Although one of skill in the art

would have been able to write a software program for digital to digital conversion, such

software did not fall within the scope of “means for converting” images as claimed

because nothing in the specification or prosecution history clearly linked or associated

such software with the function of converting images into a selected format.);

Wolfensperger,

302 F.2d at 955, 133 USPQ at 542 (just because the

disclosure provides support for a claim element does not mean that the USPTO cannot

enforce its requirement that the terms and phrases used in the claims find clear support

or antecedent basis in the written description).

V.

SINGLE MEANS CLAIMS

A single means claim is a claim that recites a means-plus-function

limitation as the only limitation of a claim.

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph, by its terms is limited to “an element in a claim for a combination.”

Therefore, single means claims that do not recite a combination cannot invoke

section

112(f)

or

pre-AIA section 112

, sixth

paragraph. As such, they are not limited to the structure, material or act disclosed in

the specification that performs the claimed function. Thus, a single means limitation

that is properly construed will cover all means of performing the claimed function. The

long-recognized problem with a single means claim is that it covers every conceivable

means for achieving the stated result, while the specification discloses at most only

those means known to the inventor.

In re Hyatt,

708 F.2d 712, 218

USPQ 195 (Fed. Cir. 1983)

laimed function. Thus, a single means limitation

that is properly construed will cover all means of performing the claimed function. The

long-recognized problem with a single means claim is that it covers every conceivable

means for achieving the stated result, while the specification discloses at most only

those means known to the inventor.

In re Hyatt,

708 F.2d 712, 218

USPQ 195 (Fed. Cir. 1983). A claim of such breadth reads on subject matter that is not

enabled by the specification, and therefore, should be rejected under

section

112(a)

or

pre-AIA section 112

, first

paragraph. See also

MPEP

§ 2164.08(a)

.

It is important to distinguish between claims that recite

multiple functional limitations (a common practice particularly in the computer-related

arts) and claims that recite a single element in means-plus-function terms (rare in most

arts). In computer-implemented inventions, a microprocessor may be programmed with

different algorithms, with each algorithm performing a separate function. Each of these

separately programmed functions should be interpreted as a separate element.

Applicants frequently draft claims to computer-related

inventions using a shorthand drafting technique that recites a generic placeholder, such

as a “system”, that performs a series of functions. This shorthand drafting technique

does not avoid invoking

35 U.S.C. 112(f)

or

pre-AIA section

112

, sixth paragraph. See

MPEP § 2181

, subsection II.B. Each

function recited in this manner should be interpreted as a separate

section

112(f)

or

pre-AIA section 112

, sixth paragraph

limitation.

For example, consider the following claim:

9. An image processing assembly that filters pixel

values, comprising:

a system configured to:

extract a first pixel value; and

compare the first pixel value to a pixel

threshold to filter pixel values that exceed the threshold value

ited in this manner should be interpreted as a separate

section

112(f)

or

pre-AIA section 112

, sixth paragraph

limitation.

For example, consider the following claim:

9. An image processing assembly that filters pixel

values, comprising:

a system configured to:

extract a first pixel value; and

compare the first pixel value to a pixel

threshold to filter pixel values that exceed the threshold value.

Assume the specification that supports this claim

discloses that the system is a microprocessor programmed with two separate

algorithms, one for performing the extraction and another for comparing the pixel

values. A proper interpretation would treat these elements as separate limitations

each of which invoke treatment under

section 112(f)

or

pre-AIA section

112

, sixth paragraph since the word “system” has no structural

meaning and in this case is serving as a generic placeholder for “means”.

The claim elements under

35 U.S.C.

112(f)

or

pre-AIA section 112

, sixth

paragraph would be interpreted as:

system configured to extract a first pixel

value; and

system configured to compare the first pixel

value to a pixel threshold to filter pixel values that exceed the threshold

value.

This claim would not be considered a "single means"

claim.

Compare this type of claim to the claim in

Hyatt

that was found to recite only a single element, which is

drafted in “means-plus-function” format but fails to be in a combination.

35. A Fourier transform processor for generating Fourier

transformed incremental output signals in response to incremental input signals, said

Fourier transform processor comprising incremental means for incrementally generating

the Fourier transformed incremental output signals in response to the incremental input

signals.

In re Hyatt,

708 F.2d 712, 714-715, 218

USPQ 195, 197 (Fed. Cir

mbination.

35. A Fourier transform processor for generating Fourier

transformed incremental output signals in response to incremental input signals, said

Fourier transform processor comprising incremental means for incrementally generating

the Fourier transformed incremental output signals in response to the incremental input

signals.

In re Hyatt,

708 F.2d 712, 714-715, 218

USPQ 195, 197 (Fed. Cir. 1983) (A single means claim which covered every conceivable means

for achieving the stated purpose was held nonenabling for the scope of the claim because

the specification disclosed at most only those means known to the inventor.)

VI.

ENSURE THAT THE RECORD IS CLEAR

When an examiner interprets a claim limitation under the

provisions of

35 U.S.C. 112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph, the Office action should specify that the examiner has done so. A claim

limitation is presumed to invoke

35 U.S.C. 112(f)

when it explicitly

uses the term “means” and includes functional language without corresponding structure

recited in the claim. When the examiner has determined that

35 U.S.C.

112(f)

applies, the examiner should also specify what the

specification identifies as the corresponding structure. If the corresponding structure

for the claimed function is not clearly identifiable in the specification, the Office

action should, nevertheless, attempt to identify what structure is most closely

associated with the means- (or step-) plus-function limitation to facilitate a prior art

search. This is especially true when there may be confusion as to which disclosed

implementation of the invention supports the limitation, as explained in subsection

II.B., above. By contrast, a claim limitation that does not use the term “means” will

trigger the presumption that

35 U.S.C. 112(f)

does not apply.

When

35 U.S.C. 112(f)

issues are raised,

the two rebuttable presumptions regarding the application of

35 U.S.C.

112(f)

should be established in the prosecution record

d

implementation of the invention supports the limitation, as explained in subsection

II.B., above. By contrast, a claim limitation that does not use the term “means” will

trigger the presumption that

35 U.S.C. 112(f)

does not apply.

When

35 U.S.C. 112(f)

issues are raised,

the two rebuttable presumptions regarding the application of

35 U.S.C.

112(f)

should be established in the prosecution record. Examiners

should apply the applicable presumption and the 3-prong analysis to interpret a

functional claim limitation in accordance with

35 U.S.C.

112(f)

including determining if the claim sets forth sufficient

structure for performing the recited function. A determination that a claim is being

interpreted according to

35 U.S.C. 112(f)

should be expressly

stated in the Office action. By this, the applicant and the public are notified as to

the claim construction used by the examiner during prosecution. Also, if the applicant

intends a different claim construction, the issue can be clarified early in prosecution.

In response to the Office action that determined

35 U.S.C.

112(f)

was invoked, if applicant does not want to have the claim

limitation interpreted under

35 U.S.C. 112(f)

applicant may: (1)

present a sufficient showing to establish that the claim limitation recites sufficient

structure to perform the claimed function so as to avoid interpretation under

35 U.S.C.

112(f)

; or (2) amend the claim limitation in a way that avoids

interpretation under

35 U.S.C. 112(f)

(e.g., by reciting

sufficient structure to perform the claimed function).

See

MPEP § 2187

for applicable form

paragraphs.

When allowing a claim that was treated under

35 U.S.C.

112(f)

the examiner should indicate that the claim was interpreted

under the provisions of

35 U.S.C. 112(f)

in reasons for

allowance if such an explanation has not previously been made of record. As noted above,

the indication should also clarify the associated structure if not readily apparent in

the specification.

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