[Federal Register Volume 76, Number 27 (Wednesday, February 9, 2011)]
[Notices]
[Pages 7162-7175]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-2841]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2010-0088]


Supplementary Examination Guidelines for Determining Compliance 
With 35 U.S.C. 112 and for Treatment of Related Issues in Patent 
Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: These supplementary guidelines are intended to assist United 
States Patent and Trademark Office (Office) personnel in the 
examination of claims in patent applications for compliance with 35 
U.S.C. 112, second paragraph, which requires that claims particularly 
point out and distinctly claim the subject matter that applicant 
regards as his or her invention. In addition, supplemental information 
is provided to assist Office personnel in the examination of claims 
that contain functional language for compliance with 35 U.S.C. 112, 
especially computer-implemented invention claims. The guidelines also 
include information to assist Office personnel in the examination of 
dependent claims for compliance with 35 U.S.C. 112, fourth

[[Page 7163]]

paragraph. The guidelines are a supplement to the current provisions in 
the Manual of Patent Examining Procedure (MPEP) pertaining to 35 U.S.C. 
112, and the current provisions in the MPEP pertaining to 35 U.S.C. 112 
remain in effect except as where indicated in these guidelines.

DATES: These guidelines and supplemental examination information are 
effective February 9, 2011. These guidelines and supplemental 
examination information apply to all applications filed before, on or 
after the effective date of February 9, 2011.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before April 11, 2011. No public 
hearing will be held.

ADDRESSES: Comments concerning these guidelines and supplemental 
examination information may be sent by electronic mail message over the 
Internet addressed to SEGuidelines112@uspto.gov, or submitted by mail 
addressed to: Mail Stop Comments--Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450. Although comments may be 
submitted by mail, the Office prefers to receive comments via the 
Internet.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
USPTO Internet Web site (address: http://www.uspto.gov). Because 
comments will be available for public inspection, information that is 
not desired to be made public, such as an address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Caroline D. Dennison, Nicole D. 
Haines, or Joni Y. Chang, Legal Advisors, Office of Patent Legal 
Administration, Office of the Associate Commissioner for Patent 
Examination Policy, by telephone at (571) 272-7729, (571) 272-7717 or 
(571) 272-7720, or by mail addressed to: Mail Stop Comments-Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Caroline D. Dennison.

SUPPLEMENTARY INFORMATION: These guidelines are intended to assist 
Office personnel in the examination of claims for compliance with 35 
U.S.C. 112, ] 2 (Sec.  112, ] 2), which requires that claims 
particularly point out and distinctly claim the subject matter that 
applicant regards as his or her invention. In addition, supplemental 
information is provided to assist Office personnel in the examination 
of claims that contain functional language for compliance with 35 
U.S.C. 112, especially computer-implemented invention claims. The 
guidelines also include information to assist Office personnel in the 
examination of dependent claims for compliance with 35 U.S.C. 112, ] 4 
(Sec.  112, ] 4). The guidelines and supplemental information are based 
on the Office's current understanding of the law and are believed to be 
fully consistent with the binding precedent of the U.S. Supreme Court, 
the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and 
its predecessor courts.
    These guidelines and supplemental information do not constitute 
substantive rule making and hence do not have the force and effect of 
law. They have been developed as a matter of internal Office management 
and are not intended to create any right or benefit, substantive or 
procedural, enforceable by any party against the Office. Rejections 
will continue to be based upon the substantive law, and it is these 
rejections that are appealable. Consequently, any failure by Office 
personnel to follow the guidelines and supplemental information is 
neither appealable nor petitionable.
    These guidelines and supplemental information merely update USPTO 
examination practice for consistency with the USPTO's current 
understanding of the case law regarding the requirements of 35 U.S.C. 
112. Therefore, these guidelines and supplemental information relate 
only to interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice. The USPTO is providing 
this opportunity for public comment because the USPTO desires the 
benefit of public comment on these guidelines and supplemental 
information; however, notice and an opportunity for public comment are 
not required under 5 U.S.C. 553(b) or any other law. See Cooper Techs. 
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 
U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice and 
comment rule making for ```interpretative rules, general statements of 
policy, or rules of agency organization, procedure, or practice.''' 
(quoting 5 U.S.C. 553(b)(A))). Persons submitting written comments 
should note that the USPTO may not provide a ``comment and response'' 
analysis of such comments as notice and an opportunity for public 
comment are not required under 5 U.S.C. 553(b) or any other law.

Part 1: Examination Guidelines for Ensuring Compliance With 35 U.S.C. 
112, Second Paragraph--Definite Claim Language

    I. Background: Optimizing patent quality by providing clear notice 
to the public of the boundaries of the inventive subject matter 
protected by a patent grant fosters innovation and competitiveness. 
Accordingly, providing high quality patents is one of the agency's 
guiding principles. The Office recognizes that issuing patents with 
clear and definite claim language is a key component to enhancing the 
quality of patents and raising confidence in the patent process.
    As part of the ongoing efforts to enhance patent quality and 
continually improve patent examination, the Office is issuing 
clarifying guidelines on examination of claims under Sec.  112, ] 2. 
This statutory section requires that a patent application specification 
shall conclude with one or more claims particularly pointing out and 
distinctly claiming the subject matter which the applicant regards as 
his or her invention. In patent examining parlance, the claim language 
must be ``definite'' to comply with Sec.  112, ] 2. Conversely, a claim 
that does not comply with this requirement of Sec.  112, ] 2 is 
``indefinite.''
    It is of utmost importance that patents issue with definite claims 
that clearly and precisely inform persons skilled in the art of the 
boundaries of protected subject matter. Therefore, claims that do not 
meet this standard must be rejected under Sec.  112, ] 2 as indefinite. 
Such a rejection requires that the applicant respond by explaining why 
the language is definite or by amending the claim, thus making the 
record clear regarding the claim boundaries prior to issuance. As an 
indefiniteness rejection requires the applicant to respond by 
explaining why the language is definite or by amending the claim, such 
rejections must clearly identify the language that causes the claim to 
be indefinite and thoroughly explain the reasoning for the rejection.
    These guidelines set forth the examining procedure for making such 
determinations and focus on several key aspects of examining claims 
under Sec.  112, ] 2. The guidelines are a first step toward providing 
additional examination guidance in this area and may be supplemented in 
later stages to address further topics relating to definite claim 
language. This document is not a comprehensive revision of the MPEP. 
However, it is anticipated that the MPEP will be updated based on a 
final version of these guidelines, and

[[Page 7164]]

those sections of the MPEP directly affected by these guidelines are 
referenced therein. The current provisions in the MPEP that are 
consistent with these guidelines remain in effect.

II. Step 1--Interpreting the Claims

    A. Broadest Reasonable Interpretation: The first step to examining 
a claim to determine if the language is definite is to fully understand 
the subject matter of the invention disclosed in the application and to 
ascertain the boundaries of that subject matter encompassed by the 
claim. During examination, a claim must be given its broadest 
reasonable interpretation consistent with the specification as it would 
be interpreted by one of ordinary skill in the art. Because the 
applicant has the opportunity to amend claims during prosecution, 
giving a claim its broadest reasonable interpretation will reduce the 
possibility that the claim, once issued, will be interpreted more 
broadly than is justified.\1\ The focus of the inquiry regarding the 
meaning of a claim should be what would be reasonable from the 
perspective of one of ordinary skill in the art.\2\ See MPEP Sec.  2111 
for a full discussion of broadest reasonable interpretation.
    Under a broadest reasonable interpretation, words of the claim must 
be given their plain meaning, unless such meaning is inconsistent with 
the specification. The plain meaning of a term means the ordinary and 
customary meaning given to the term by those of ordinary skill in the 
art at the time of the invention. The ordinary and customary meaning of 
a term may be evidenced by a variety of sources, including the words of 
the claims themselves, the specification, drawings, and prior art. 
However, the best source for determining the meaning of a claim term is 
the specification--the greatest clarity is obtained when the 
specification serves as a glossary for the claim terms. The presumption 
that a term is given its ordinary and customary meaning may be rebutted 
by the applicant by clearly setting forth a different definition of the 
term in the specification.\3\ When the specification sets a clear path 
to the claim language, the scope of the claims is more easily 
determined and the public notice function of the claims is best served. 
See MPEP Sec.  2111.01 for a full discussion of the plain meaning of 
claim language.
    B. Claims Under Examination Are Evaluated With a Different Standard 
Than Patented Claims to Determine Whether the Language Is Definite: 
Patented claims enjoy a presumption of validity and are not given the 
broadest reasonable interpretation during court proceedings involving 
infringement and validity, and can be interpreted based on a fully 
developed prosecution record. Accordingly, when possible, courts 
construe patented claims in favor of finding a valid interpretation. A 
court will not find a patented claim indefinite unless it is 
``insolubly ambiguous.'' \4\ In other words, the validity of a claim 
will be preserved if some meaning can be gleaned from the language.
    In contrast, no presumption of validity attaches before the 
issuance of a patent. The Office is not required or even permitted to 
interpret claims when examining patent applications in the same manner 
as the courts, which, post-issuance, operate under the presumption of 
validity.\5\ The Office must construe claims in the broadest reasonable 
manner during prosecution in an effort to establish a clear record of 
what applicant intends to claim. In deciding whether a pending claim 
particularly points out and distinctly claims the subject matter, a 
lower threshold of ambiguity is applied during prosecution.\6\ The 
lower threshold is applied because the patent record is in development 
and not fixed. As such, applicant has the ability to provide 
explanation and/or amend the claims to ensure that the meaning of the 
language is clear and definite prior to issuance.\7\
    During examination, after applying the broadest reasonable 
interpretation to the claim, if the metes and bounds of the claimed 
invention are not clear, the claim is indefinite and should be 
rejected.\8\ For example, if the language of a claim, given its 
broadest reasonable interpretation, is such that a person of ordinary 
skill in the relevant art would read it with more than one reasonable 
interpretation, then a rejection under Sec.  112, ] 2 is 
appropriate.\9\ Examiners, however, are cautioned against confusing 
claim breadth with claim indefiniteness. A broad claim is not 
indefinite merely because it encompasses a wide scope of subject matter 
provided the scope is clearly defined. Instead, a claim is indefinite 
when the boundaries of the protected subject matter are not clearly 
delineated and the scope is unclear. For example, a genus claim that 
covers multiple species is broad, but is not indefinite because of its 
breadth, which is otherwise clear. But a genus claim that could be 
interpreted in such a way that it is not clear which species are 
covered would be indefinite (e.g., because there is more than one 
reasonable interpretation of what species are included in the claim). 
See PART 1, section III.A.4. (below), for more information regarding 
the determination of whether a Markush claim satisfies the requirements 
of Sec.  112, ] 2.
    C. Determine Whether Each Claim Limitation Invokes 35 U.S.C. 112, 
 6 or Not: As part of the claim interpretation analysis, 
examiners should determine whether each limitation invokes 35 U.S.C. 
112, ] 6 (112, ] 6) or not. If the claim limitation invokes 112, ] 6, 
the claim limitation must ``be construed to cover the corresponding 
structure, material, or acts described in the specification and 
equivalents thereof.'' \10\ See PART 1, section III.C. (below), for 
more information regarding the determination of whether a limitation 
invokes 112, ] 6, and means-plus-function claim limitations.
    III. Step 2--Determining Whether Claim Language Is Definite: During 
prosecution, applicant has an opportunity and a duty to amend ambiguous 
claims to clearly and precisely define the metes and bounds of the 
claimed invention. The claim places the public on notice of the scope 
of the patentee's right to exclude.\11\ As the Federal Circuit stated 
in Halliburton Energy Services:

    We note that the patent drafter is in the best position to 
resolve the ambiguity in the patent claims, and it is highly 
desirable that patent examiners demand that applicants do so in 
appropriate circumstances so that the patent can be amended during 
prosecution rather than attempting to resolve the ambiguity in 
litigation.\12\

    A decision on whether a claim is indefinite under Sec.  112, ] 2 
requires a determination of whether those skilled in the art would 
understand what is claimed when the claim is read in light of the 
specification.\13\ Claim terms are typically given their ordinary and 
customary meaning as understood by one of ordinary skill in the 
pertinent art, and the generally understood meaning of particular terms 
may vary from art to art. Therefore, it is important to analyze claim 
terms in view of the application's specification from the perspective 
of those skilled in the relevant art since a particular term used in 
one patent or application may not have the same meaning when used in a 
different application.\14\
    The following sections highlight certain areas in which questions 
of definiteness commonly arise.

A. Indeterminate Terms

    1. Functional Claiming: A claim term is functional when it recites 
a feature ``by what it does rather than by what it is.'' \15\ There is 
nothing intrinsically wrong with the use of such claim language.\16\ In 
fact, Sec.  112, ] 6, expressly authorizes a form of functional 
claiming

[[Page 7165]]

(means-plus-function claim limitations discussed in III.C. below). 
Functional language may also be employed to limit the claims without 
using the means-plus-function format.\17\ Unlike means-plus-function 
claim language that applies only to purely functional limitations,\18\ 
functional claiming often involves the recitation of some structure 
followed by its function. For example, in In re Schreiber, the claims 
were directed to a conical spout (the structure) that ``allow[ed] 
several kernels of popped popcorn to pass through at the same time'' 
(the function).\19\ As noted by the court in Schreiber, ``[a] patent 
applicant is free to recite features of an apparatus either 
structurally or functionally.'' \20\
    Notwithstanding the permissible instances, the use of functional 
language in a claim may fail ``to provide a clear-cut indication of the 
scope of the subject matter embraced by the claim'' and thus be 
indefinite.\21\ For example, when claims merely recite a description of 
a problem to be solved or a function or result achieved by the 
invention, the boundaries of the claim scope may be unclear.\22\ 
Further, without reciting the particular structure, materials or steps 
that accomplish the function or achieve the result, all means or 
methods of resolving the problem may be encompassed by the claim.\23\ 
Unlimited functional claim limitations that extend to all means or 
methods of resolving a problem may not be adequately supported by the 
written description or may not be commensurate in scope with the 
enabling disclosure,\24\ both of which are required by Sec.  112, ] 
1.\25\ For instance, a single means claim covering every conceivable 
means for achieving the stated result was held to be invalid under 
Sec.  112, ] 1 because the court recognized that the specification, 
which disclosed only those means known to the inventor, was not 
commensurate in scope with the claim.\26\ For more information 
regarding the written description requirement and enablement 
requirement under Sec.  112, ] 1, see MPEP Sec. Sec.  2161-2164.08(c) 
and PART 2, sections I and II (below).
    When a claim limitation employs functional language, the examiner's 
determination of whether the limitation is sufficiently definite will 
be highly dependent on context (e.g., the disclosure in the 
specification and the knowledge of a person of ordinary skill in the 
art).\27\ For example, a claim that included the term ``fragile gel'' 
was found to be indefinite because the definition of the term in the 
specification was functional, i.e., the fluid is defined by what it 
does rather than what it is (``ability of the fluid to transition 
quickly from gel to liquid, and the ability of the fluid to suspend 
drill cuttings at rest''), and it was ambiguous as to the requisite 
degree of the fragileness of the gel, the ability of the gel to suspend 
drill cuttings (i.e., gel strength), and/or some combination of the 
two.\28\ In another example, the claims directed to a tungsten filament 
for electric incandescent lamps were held invalid for including a 
limitation that recited ``comparatively large grains of such size and 
contour as to prevent substantial sagging or offsetting during a normal 
or commercially useful life for such a lamp or other device.'' \29\ The 
court observed that the prior art filaments also ``consisted of 
comparatively large crystals'' but they were ``subject to offsetting'' 
or shifting, and the court further found that the phrase ``of such size 
and contour as to prevent substantial sagging and offsetting during a 
normal or commercially useful life for a lamp or other device'' did not 
adequately define the structural characteristics of the grains (e.g., 
the size and contour) to distinguish the claimed invention from the 
prior art.\30\ Similarly, a claim was held invalid because it recited 
``sustantially (sic) pure carbon black in the form of commercially 
uniform, comparatively small, rounded smooth aggregates having a spongy 
or porous exterior.'' \31\ In the latter example, the Court observed 
various problems with the limitation: ``commercially uniform'' meant 
only the degree of uniformity buyers desired; ``comparatively small'' 
did not add anything because no standard for comparison was given; and 
``spongy'' and ``porous'' are synonyms that the Court found unhelpful 
in distinguishing the claimed invention from the prior art.\32\
    In comparison, a claim limitation reciting ``transparent to 
infrared rays'' was held to be definite because the specification 
showed that a substantial amount of infrared radiation was always 
transmitted even though the degree of transparency varied depending on 
certain factors.\33\ Likewise, the claims in another case were held 
definite because applicant provided ``a general guideline and examples 
sufficient to enable a person of ordinary skill in the art to determine 
whether a process uses a silicon dioxide source `essentially free of 
alkali metal' to make a reaction mixture `essentially free of alkali 
metal' to produce a zeolitic compound `essentially free of alkali 
metal.' '' \34\
    Examiners should consider the following factors when examining 
claims that contain functional language to determine whether the 
language is ambiguous: (1) Whether there is a clear cut indication of 
the scope of the subject matter covered by the claim; (2) whether the 
language sets forth well-defined boundaries of the invention or only 
states a problem solved or a result obtained; and (3) whether one of 
ordinary skill in the art would know from the claim terms what 
structure or steps are encompassed by the claim. These factors are 
examples of points to be considered when determining whether language 
is ambiguous and are not intended to be all inclusive or limiting. 
Other factors may be more relevant for particular arts. The primary 
inquiry is whether the language leaves room for ambiguity or whether 
the boundaries are clear and precise.
    During prosecution, applicant may resolve the ambiguities of a 
functional limitation in a number of ways. For example: (1) ``The 
ambiguity might be resolved by using a quantitative metric (e.g., 
numeric limitation as to a physical property) rather than a qualitative 
functional feature;'' \35\ (2) applicant could demonstrate that the 
``specification provide[s] a formula for calculating a property along 
with examples that meet the claim limitation and examples that do 
not;'' \36\ (3) applicant could demonstrate that the specification 
provides a general guideline and examples sufficient to teach a person 
skilled in the art when the claim limitation was satisfied; \37\ or (4) 
applicant could amend the claims to recite the particular structure 
that accomplishes the function.
    2. Terms of Degree: When a term of degree is used in the claim, the 
examiner should determine whether the specification provides some 
standard for measuring that degree.\38\ If the specification does not 
provide some standard for measuring that degree, a determination must 
be made as to whether one of ordinary skill in the art could 
nevertheless ascertain the scope of the claim (e.g., a standard that is 
recognized in the art for measuring the meaning of the term of 
degree).\39\ The claim is not indefinite if the specification provides 
examples or teachings that can be used to measure a degree even without 
a precise numerical measurement (e.g., a figure that provides a 
standard for measuring the meaning of the term of degree).\40\ During 
prosecution, an applicant may also overcome an indefiniteness rejection 
by submitting a declaration under 37 CFR 1.132 showing examples that 
meet the claim limitation and examples that do not.\41\
    3. Subjective Terms: When a subjective term is used in the claim, 
the examiner should determine whether the specification supplies some 
standard for

[[Page 7166]]

measuring the scope of the term, similar to the analysis for a term of 
degree. Some objective standard must be provided in order to allow the 
public to determine the scope of the claim. A claim that requires the 
exercise of subjective judgment without restriction may render the 
claim indefinite.\42\ Claim scope cannot depend solely on the 
unrestrained, subjective opinion of a particular individual purported 
to be practicing the invention.\43\
    For example, in Datamize, the invention was directed to a computer 
interface screen with an ``aesthetically pleasing look and feel.'' \44\ 
The meaning of the term ``aesthetically pleasing'' depended solely on 
the subjective opinion of the person selecting features to be included 
on the interface screen. Nothing in the intrinsic evidence (e.g., the 
specification) provided any guidance as to what design choices would 
result in an ``aesthetically pleasing'' look and feel.\45\ The claims 
were held indefinite because the interface screen may be 
``aesthetically pleasing'' to one user but not to another.\46\
    During prosecution, the applicant may overcome a rejection by 
providing evidence that the meaning of the term can be ascertained by 
one of ordinary skill in the art when reading the disclosure, or by 
amending the claim to remove the subjective term.
    4. Markush Groups: A ``Markush'' claim recites a list of 
alternatively useable species.\47\ A Markush claim is commonly 
formatted as: ``selected from the group consisting of A, B, and C;'' 
however, the phrase ``Markush claim'' as used in these guidelines means 
any claim that recites a list of alternatively useable species 
regardless of format. A Markush claim may encompass a large number of 
alternative species, but is not necessarily indefinite under Sec.  112, 
]2 for such breadth.\48\ In certain circumstances, however, a Markush 
group may be so expansive that persons skilled in the art cannot 
determine the metes and bounds of the claimed invention. For example, a 
Markush group that encompasses a massive number of distinct alternative 
species may be indefinite under Sec.  112, ]2 if one skilled in the art 
cannot determine the metes and bounds of the claim due to an inability 
to envision all of the members of the Markush group. In such a 
circumstance, an examiner may reject the claim for indefiniteness under 
Sec.  112, ]2.
    In addition, a Markush claim may be rejected under the judicially 
approved ``improper Markush grouping'' doctrine when the claim contains 
an improper grouping of alternatively useable species.\49\ A Markush 
claim contains an ``improper Markush grouping'' if: (1) The species of 
the Markush group do not share a ``single structural similarity,'' \50\ 
or (2) the species do not share a common use. Members of a Markush 
group share a ``single structural similarity'' when they belong to the 
same recognized physical or chemical class or to the same art-
recognized class. Members of a Markush group share a common use when 
they are disclosed in the specification or known in the art to be 
functionally equivalent.\51\ When an examiner determines that the 
species of a Markush group do not share a single structural similarity 
or do not share a common use, then a rejection on the basis that the 
claim contains an ``improper Markush grouping'' is appropriate. The 
examiner should maintain the rejection of the claim on the basis that 
the claim contains an ``improper Markush grouping'' until the claim is 
amended to include only the species that share a single structural 
similarity and a common use, or the applicant presents a sufficient 
showing that the species in fact share a single structural similarity 
and a common use.
    Under principles of compact prosecution, the examiner should also 
require the applicant to elect a species or group of indistinct species 
for search and examination (i.e., an election of species).\52\ If the 
examiner does not find the species or group of indistinct species in 
the prior art, then the examiner should extend the search to those 
additional species that fall within the scope of a permissible Markush 
claim. In other words, the examiner should extend the search to the 
species that share a single structural similarity and a common use. The 
improper Markush claim should be examined for patentability over the 
prior art with respect to the elected species or group of indistinct 
species, as well as the species that share a single structural 
similarity and a common use with the elected species or group of 
indistinct species (i.e., the species that would fall within the scope 
of a proper Markush claim). The examiner should also reject the claim 
under Sec.  112, ]2 as indefinite if appropriate.
    Depending upon the circumstances of an application, it may be 
appropriate to reject a Markush claim under Sec.  112, ]2 as indefinite 
(if one skilled in the art cannot determine the metes and bounds of the 
Markush claim due to an inability to envision all of the members of the 
Markush), or under the ``improper Markush grouping'' doctrine (if the 
species of a Markush group do not share a single structural similarity 
or a common use). Alternatively, it may be appropriate to reject a 
Markush claim under both Sec.  112, ]2 and the ``improper Markush 
grouping'' doctrine.
    5. Dependent Claims: When examining a dependent claim, the examiner 
should also determine whether the claim complies with Sec.  112, ]4, 
which requires that dependent claims contain a reference to a previous 
claim in the same application, specify a further limitation of the 
subject matter claimed, and necessarily include all the limitations of 
the previous claim.\53\ If the dependent claim does not comply with the 
requirements of Sec.  112, ]4, the examiner should reject the dependent 
claim under Sec.  112, ]4 as unpatentable rather than objecting to the 
claim.\54\ Although the requirements of Sec.  112, ]4 are related to 
matters of form, non-compliance with Sec.  112, ]4 renders the claim 
unpatentable just as non-compliance with other paragraphs of Sec.  112 
would.\55\ For example, a dependent claim must be rejected under Sec.  
112, ]4 if it omits an element from the claim upon which it depends 
\56\ or it fails to add a limitation to the claim upon which it 
depends.\57\
    B. Correspondence Between Specification and Claims: The 
specification should ideally serve as a glossary to the claim terms so 
that the examiner and the public can clearly ascertain the meaning of 
the claim terms. Correspondence between the specification and claims is 
required by 37 CFR 1.75(d)(1), which provides that claim terms must 
find clear support or antecedent basis in the specification so that the 
meaning of the terms may be ascertainable by reference to the 
specification. To meet the definiteness requirement under Sec.  112, 
]2, the exact claim terms are not required to be used in the 
specification as long as the specification provides the needed guidance 
on the meaning of the terms (e.g., by using clearly equivalent terms) 
so that the meaning of the terms is readily discernable to a person of 
ordinary skill in the art.\58\ Nevertheless, glossaries of terms used 
in the claims are a helpful device for ensuring adequate definition of 
terms used in claims. Express definitions of claim terms can eliminate 
the need for any ``time-consuming and difficult inquiry into 
indefiniteness.'' \59\ Therefore, applicants are encouraged to use 
glossaries as a best practice in patent application preparation. If the 
specification does not provide the needed support or antecedent basis 
for the claim terms, the specification should be objected to under 37 
CFR 1.75(d)(1).\60\ Applicant will be required to make appropriate 
amendment to the description to provide clear support or

[[Page 7167]]

antecedent basis for the claim terms provided no new matter is 
introduced, or amend the claim.
    A claim, although clear on its face, may also be indefinite when a 
conflict or inconsistency between the claimed subject matter and the 
specification disclosure renders the scope of the claim uncertain.\61\ 
For example, a claim with a limitation of ``the clamp means including a 
clamp body and first and second clamping members, the clamping members 
being supported by the clamp body'' was determined to be indefinite 
because the terms ``first and second clamping members'' and ``clamp 
body'' were found to be vague in light of the specification which 
showed no ``clamp member'' structure being ``supported by the clamp 
body.'' \62\ In another example, a claim was directed to a process of 
treating an aluminum surface with an alkali silicate solution and 
included a further limitation that the surface has an ``opaque'' 
appearance.\63\ The specification, meanwhile, associated the use of an 
alkali silicate with a glazed or porcelain-like finish, which the 
specification distinguished from an opaque finish.\64\ Noting that no 
claim may be read apart from and independent of the supporting 
disclosure on which it is based, the court found that the claim was 
internally inconsistent based on the description, definitions and 
examples set forth in the specification relating to the appearance of 
the surface after treatment, and therefore indefinite.\65\

C. Interpreting Claim Limitations Under Sec.  112, ]6

    1. Determining Whether a Claim Limitation Invokes Sec.  112, 
6: If a claim limitation recites a term and associated 
functional language, the examiner should determine whether the claim 
limitation invokes Sec.  112, ]6. The claim limitation is presumed to 
invoke Sec.  112, ]6 when it explicitly uses the phrase ``means for'' 
or ``step for'' and includes functional language. That presumption is 
overcome when the limitation further includes the structure necessary 
to perform the recited function.\66\
    By contrast, a claim limitation that does not use the phrase 
``means for'' or ``step for'' will trigger the rebuttable presumption 
that Sec.  112, ]6 does not apply.\67\ This presumption is a strong one 
that is not readily overcome.\68\ This strong presumption may be 
overcome if the claim limitation is shown to use a non-structural term 
that is ``a nonce word or a verbal construct that is not recognized as 
the name of structure'' but is merely a substitute for the term ``means 
for,'' associated with functional language.\69\ However, Sec.  112, ]6 
will not apply if persons of ordinary skill in the art reading the 
specification understand the term to be 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'').\70\ The term is not required to denote a specific structure 
or a precise physical structure to avoid the application of Sec.  112, 
]6.\71\
    When the claim limitation does not use the phrase ``means for'' or 
``step for,'' examiners should determine whether the claim limitation 
uses a non-structural term (a term that is simply a substitute for the 
term ``means for''). Examiners will apply Sec.  112, ]6 to a claim 
limitation that uses a non-structural term associated with functional 
language, unless the non-structural 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) modified by sufficient 
structure or material for achieving the claimed function. The following 
is a list of non-structural terms that may invoke Sec.  112, ]6: 
``mechanism for,'' ``module for,'' ``device for,'' ``unit for,'' 
``component for,'' ``element for,'' ``member for,'' ``apparatus for,'' 
``machine for,'' or ``system for.'' \72\ This list is not exhaustive, 
and other non-structural terms may invoke Sec.  112, ]6. The following 
are examples of structural terms that have been found not to invoke 
Sec.  112, ]6: ``circuit for,'' \73\ ``detent mechanism,'' \74\ 
``digital detector for,'' \75\ ``reciprocating member,'' \76\ 
``connector assembly,'' \77\ ``perforation,'' \78\ ``sealingly 
connected joints,'' \79\ and ``eyeglass hanger member.'' \80\
    A limitation will not invoke Sec.  112, ]6 if there is a structural 
modifier that further describes the non-structural term. For example, 
although a non-structural term like ``mechanism'' standing alone may 
invoke Sec.  112, ]6 when coupled with a function, it will not invoke 
Sec.  112, ]6 when it is preceded by a structural modifier (e.g., 
``detent mechanism'').\81\ By contrast, when a non-structural term is 
preceded by a non-structural modifier that does not have any generally 
understood structural meaning in the art, the phrase may invoke Sec.  
112, ]6 when coupled with a function (e.g., ``colorant selection 
mechanism,'' ``lever moving element,'' or ``movable link member'').\82\
    To determine whether a word, term, or phrase coupled with a 
function denotes structure, examiners should 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 (3) the 
prior art provides evidence that the term has an art-recognized 
structure to perform the claimed function.\83\
    Examiners will apply Sec.  112, ] 6 to a claim limitation that 
meets the following conditions: (1) The claim limitation uses the 
phrase ``means for'' or ``step for'' or a non-structural term that does 
not have a structural modifier; (2) the phrase ``means for'' or ``step 
for'' or the non-structural term recited in the claim is modified by 
functional language; and (3) the phrase ``means for'' or ``step for'' 
or the non-structural term recited in the claim is not modified by 
sufficient structure, material, or acts for achieving the specified 
function.
    This guideline modifies the 3-prong analysis in MPEP Sec.  2181, 
which will be revised in due course.
    When it is unclear whether a claim limitation invokes Sec.  112, ] 
6 or not, a rejection under Sec.  112, ] 2 may be appropriate.\84\ 
Similarly, when applicant uses the phrase ``means for'' or ``step for'' 
in the preamble, a rejection under Sec.  112, ] 2 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. If applicant uses a structural 
or non-structural term with the word ``for'' in the preamble, the 
examiner should not construe such phrase as reciting a means-plus-
function limitation.
    2. Rejections Under Sec.  112,  2 When Examining Means-
Plus-Function Limitations Under Sec.  112,  6: Once the 
examiner determines that a claim limitation is a means-plus-function 
limitation invoking Sec.  112, ] 6, the examiner should determine the 
claimed function \85\ 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.\86\ 
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.\87\ To satisfy the definiteness requirement under 
Sec.  112, ] 2, the written description must clearly link or associate 
the corresponding structure, material, or acts to the claimed 
function.\88\ A rejection under Sec.  112, ] 2 is appropriate if the 
written description

[[Page 7168]]

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.\89\ A bare statement that known techniques or methods can be 
used would not be a sufficient disclosure to support a means-plus-
function limitation.\90\
    A rejection under Sec.  112, ] 2 may be appropriate in the 
following situations when examining means-plus-function claim 
limitations under Sec.  112, ] 6: (1) When it is unclear whether a 
claim limitation invokes Sec.  112, ] 6; (2) when Sec.  112, ] 6 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 Sec.  112, ] 6 is invoked and the supporting disclosure 
fails to clearly link or associate the disclosed structure, material, 
or acts to the claimed function.\91\ When the examiner cannot identify 
the corresponding structure, material, or acts, a rejection under Sec.  
112, ] 2 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.\92\ If a requirement for 
information under 37 CFR 1.105 is made and the applicant states that he 
or she lacks such information or the reply does not identify the 
corresponding structure, material, or acts, a rejection under Sec.  
112, ] 2 should be made.\93\
    If the written description sets forth the corresponding structure, 
material, or acts in compliance with Sec.  112, ] 2, the claim 
limitation must ``be construed to cover the corresponding structure, 
material, or acts described in the specification and equivalents 
thereof.'' \94\ 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.\95\
    3. Computer-Implemented Means-Plus-Function Limitations: For a 
computer-implemented means-plus-function claim limitation invoking 
Sec.  112, ] 6, the corresponding structure is required to be more than 
simply a general purpose computer or microprocessor.\96\ To claim a 
means for performing a particular 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.\97\
    The structure corresponding to a Sec.  112, ] 6 claim limitation 
for a computer-implemented function must include the algorithm needed 
to transform the general purpose computer or microprocessor disclosed 
in the specification.\98\ The corresponding structure is not simply a 
general purpose computer by itself but the special purpose computer as 
programmed to perform the disclosed algorithm.\99\ Thus, the 
specification must sufficiently disclose an algorithm to transform a 
general purpose microprocessor to the special purpose computer.\100\ An 
algorithm is defined, for example, as ``a finite sequence of steps for 
solving a logical or mathematical problem or performing a task.'' \101\ 
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.'' \102\
    A rejection under Sec.  112, ] 2 is appropriate if the 
specification discloses no corresponding algorithm associated with a 
computer or microprocessor.\103\ For example, mere reference to a 
general purpose computer with appropriate programming without providing 
an explanation of the appropriate programming,\104\ or simply reciting 
``software'' without providing detail about the means to accomplish the 
software function,\105\ would not be an adequate disclosure of the 
corresponding structure to satisfy the requirements of Sec.  112, ] 2. 
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.\106\
    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.\107\ 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.\108\ 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.\109\
    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.\110\ 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.\111\
    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 Sec.  112, 
] 6 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 Sec.  112, ] 6, 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 
Sec.  112, ] 2. 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.

[[Page 7169]]

IV. Step 3--Resolving Indefinite Claim Language

    A. Examiner Must Establish a Clear Record: Examiners are urged to 
carefully carry out their responsibilities to see that the application 
file contains a complete and accurate picture of the Office's 
consideration of the patentability of an application.\112\ In order to 
provide a complete application file history and to enhance the clarity 
of the prosecution history record, an examiner should provide clear 
explanations of all actions taken during prosecution of the 
application.\113\ Thus, when a rejection under Sec.  112, ] 2, is 
appropriate based on the examiner's determination that a claim term or 
phrase is indefinite, the examiner should clearly communicate in an 
Office action any findings and reasons which support the rejection and 
avoid a mere conclusion that the claim term or phrase is 
indefinite.\114\
    MPEP Sec.  2173.05 provides numerous examples of rationales that 
may support a rejection under Sec.  112, ] 2, such as functional claim 
limitations, relative terminology/terms of degree, lack of antecedent 
basis, etc. (See PART 1, section III above for detailed guidance on 
certain situations in determining whether claim language is definite.) 
Only by providing a complete explanation in the Office action as to the 
basis for determining why a particular term or phrase used in the claim 
is ``vague and indefinite'' will the examiner enhance the clarity of 
the prosecution history record.\115\
    B. An Office Action Should Provide a Sufficient Explanation: The 
Office action must set forth the specific term or phrase that is 
indefinite and why the metes and bounds are unclear. Since a rejection 
requires the applicant to respond by explaining why claim language is 
definite or by amending the claim, the Office action should provide 
enough information for the applicant to prepare a meaningful response. 
``Because claims delineate the patentee's right to exclude, the patent 
statute requires that the scope of the claims be sufficiently definite 
to inform the public of the bounds of the protected invention, i.e., 
what subject matter is covered by the exclusive rights of the patent.'' 
\116\ Thus, claims are given their broadest reasonable interpretation 
during prosecution ``to facilitate sharpening and clarifying the claims 
at the application stage'' when claims are readily changed.\117\
    To comply with Sec.  112, ] 2, applicants are required to make the 
terms that are used to define the invention clear and precise, so that 
the metes and bounds of the subject matter that will be protected by 
the patent grant can be ascertained.\118\ It is important that a person 
of ordinary skill in the art be able to interpret the metes and bounds 
of the claims so as to understand how to avoid infringement of the 
patent that ultimately issues from the application being examined.\119\ 
Examiners should bear in mind that ``[a]n essential purpose of patent 
examination is to fashion claims that are precise, clear, correct, and 
unambiguous. Only in this way can uncertainties of claim scope be 
removed, as much as possible, during the administrative process.'' 
\120\
    Accordingly, when rejecting a claim as indefinite under Sec.  112, 
] 2, the examiner should provide enough information in the Office 
action to permit applicant to make a meaningful response, as the 
indefiniteness rejection requires the applicant to explain or provide 
evidence as to why the claim language is not indefinite or amend the 
claim. For example, the examiner should point out the specific term or 
phrase that is indefinite, explain in detail why such term or phrase 
renders the metes and bounds of the claim scope unclear and, whenever 
practicable, indicate how the indefiniteness issues may be resolved to 
overcome the rejection.\121\
    The focus during the examination of claims for compliance with the 
requirement for definiteness under Sec.  112, ] 2, is whether the claim 
meets the threshold requirements of clarity and precision, not whether 
more suitable language or modes of expression are available. See MPEP 
Sec.  2173.02. If the language used by applicant satisfies the 
statutory requirement of Sec.  112, ] 2, but the examiner merely wants 
the applicant to improve the clarity or precision of the language used, 
the examiner should suggest improved claim language to the applicant 
and not make a rejection under Sec.  112, ] 2.\122\ Furthermore, when 
the examiner determines that more information is necessary to ascertain 
the meaning of a claim term, a requirement for information under 37 CFR 
1.105 is appropriate. See MPEP Sec.  704.10 regarding requirements for 
information.
    It is highly desirable to have applicants resolve ambiguity by 
amending the claims during prosecution of the application rather than 
attempting to resolve the ambiguity in subsequent litigation of the 
issued patent.\123\ Likewise, if the applicant traverses a rejection 
under Sec.  112, ] 2, with or without the submission of an amendment, 
and the examiner considers applicant's arguments to be persuasive, the 
examiner should indicate in the next Office communication that the 
previous rejection under Sec.  112, ] 2, has been withdrawn and provide 
an explanation as to what prompted the change in the examiner's 
position (e.g., by making specific reference to portions of applicant's 
remarks).\124\

C. Practice Compact Prosecution

    1. Interpret the Claim and Apply Art With an Explanation of How an 
Indefinite Term Is Interpreted: The goal of examination is to clearly 
articulate any rejection early in the prosecution process so that the 
applicant has the chance to provide evidence of patentability and 
otherwise reply completely at the earliest opportunity.\125\ Under the 
principles of compact prosecution, the examiner should review each 
claim for compliance with every statutory requirement for patentability 
in the initial review of the application and identify all of the 
applicable grounds of rejection in the first Office action to avoid 
unnecessary delays in the prosecution of the application.\126\
    Thus, when the examiner determines that a claim term or phrase 
renders the claim indefinite, the examiner should make a rejection 
based on indefiniteness under Sec.  112, ] 2, as well as a rejection(s) 
in view of the prior art under Sec.  102 or Sec.  103 that renders the 
prior art applicable based on the examiner's interpretation of the 
claim. When making a rejection over prior art in these circumstances, 
it is important that the examiner state on the record how the claim 
term or phrase is being interpreted with respect to the prior art 
applied in the rejection. By rejecting each claim on all reasonable 
grounds available, the examiner can avoid piecemeal examination.\127\
    2. Open Lines of Communication With the Applicant--When 
Indefiniteness Is the Only Issue, Attempt Resolution Through an 
Interview Before Resorting to a Rejection: Examiners are reminded that 
interviews can be an effective examination tool and are encouraged to 
initiate an interview with the applicant or applicant's representative 
at any point during the pendency of an application, if the interview 
can help further prosecution, shorten pendency, or provide a benefit to 
the examiner or applicant.\128\ Issues of claim interpretation and 
clarity of scope may lend themselves to resolution through an examiner 
interview. For example, the examiner may initiate an interview to 
discuss, among other issues, the broadest reasonable interpretation of 
a claim, the meaning of a particular claim limitation, and the scope 
and clarity of preamble language, functional language,

[[Page 7170]]

intended use language, and means-plus-function limitations, etc.
    An interview can serve to develop and clarify such issues and lead 
to a mutual understanding between the examiner and the applicant, 
potentially eliminating the need for the examiner to resort to making a 
rejection under Sec.  112, ] 2. The examiner is reminded that the 
substance of any interview, whether in person, by video conference, or 
by telephone must be made of record in the application, whether or not 
an agreement was reached at the interview.\129\ Examples of Sec.  112 
issues that should be made of record after the interview include: why 
the discussed claim term is or is not sufficiently clear; why the 
discussed claim term is or is not inconsistent with the specification; 
why the discussed claim term does or does not invoke Sec.  112, ] 6, 
(and if it does, the identification of corresponding structure in the 
specification for a Sec.  112, ] 6 limitation); and any claim 
amendments discussed that would resolve identified ambiguities.

D. Ensure That the Record Is Clear

    1. Provide Claim Interpretation in Reasons for Allowance When 
Record Is Unclear: Pursuant to 37 CFR 1.104(e), if the examiner 
believes that the record of the prosecution as a whole does not make 
clear his or her reasons for allowing a claim or claims, the examiner 
may set forth such reasoning in reasons for allowance.\130\ One of the 
primary purposes of 37 CFR 1.104(e) is to improve the quality and 
reliability of issued patents by providing a complete file history 
which should clearly reflect the reasons why the application was 
allowed. Such information facilitates evaluation of the scope and 
strength of a patent by the patentee and the public and may help avoid 
or simplify subsequent litigation of an issued patent.\131\ In meeting 
the need for the application file history to speak for itself, it is 
incumbent upon the examiner in exercising his or her responsibility to 
the public, to see that the file history is complete.\132\
    For example, when allowing a claim based on a claim interpretation 
which might not be readily apparent from the record of the prosecution 
as a whole, the examiner should set forth in reasons for allowance the 
claim interpretation that he or she applied in determining that the 
claim is allowable over the prior art.\133\ This is especially the case 
where the application is allowed after an interview. The examiner 
should ensure, however, that statements of reasons for allowance do not 
place unwarranted interpretations, whether broad or narrow, upon the 
claims.\134\
    2. Provide Claim Interpretation When Sec.  112,  6 Is 
Invoked: The examiner should specify in the Office action that a claim 
limitation has been interpreted under the provisions of Sec.  112, ] 6, 
as provided above in section III.C. When claim terms other than ``means 
for'' or ``step for'' are determined to invoke Sec.  112, ] 6 pursuant 
to the guidance above, the reasons why the claim was interpreted as 
invoking 112, ] 6, should also be clearly stated in the Office action. 
For example, the Office action can include a statement that a certain 
claim limitation is expressed in functional terms coupled to a non-
structural word (e.g., ``module for,'') that does not connote structure 
and therefore invokes treatment under Sec.  112, ] 6. When the examiner 
has determined that Sec.  112, ] 6 applies, the examiner may also 
specify what the specification identifies as the corresponding 
structure.
    Additionally, 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-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 section III.C.3 above.
    When allowing a claim that was treated under Sec.  112, ]6, the 
examiner should indicate that the claim was interpreted under the 
provisions of Sec.  112, ]6 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.

Part 2: Supplemental Information for Examining Computer-Implemented 
Functional Claim Limitations

    The statutory requirements for computer-implemented inventions are 
the same as for all inventions, such as the subject matter eligibility 
\135\ and utility \136\ requirements under Sec.  101, the definiteness 
requirement of Sec.  112, ] 2, the three separate and distinct 
requirements of Sec.  112, ] 1,\137\ the novelty requirement of Sec.  
102, and nonobviousness requirement of Sec.  103.\138\ Nevertheless, 
computer-implemented inventions have certain unique examination issues, 
especially those that are claimed using functional language that is not 
limited to a specific structure. This section provides supplemental 
information to assist examiners in examining computer-implemented 
functional claim limitations. See PART 1, sections III.C. and IV.D. 
(above) for information regarding means (or step) plus function 
limitations that invoke Sec.  112, ] 6.
    I. Determining Whether There Is Adequate Written Description for a 
Computer-Implemented Functional Claim Limitation: The first paragraph 
of Sec.  112 contains a written description requirement that is 
separate and distinct from the enablement requirement.\139\ To satisfy 
the written description requirement, the specification must describe 
the claimed invention in sufficient detail that one skilled in the art 
can reasonably conclude that the inventor had possession of the claimed 
invention.\140\ Specifically, the specification must describe the 
claimed invention in a manner understandable to a person of ordinary 
skill in the art and show that the inventor actually invented the 
claimed invention.\141\
    The written description requirement of Sec.  112, ] 1 applies to 
all claims including original claims that are part of the disclosure as 
filed.\142\ As stated by the Federal Circuit, ``[a]lthough many 
original claims will satisfy the written description requirement, 
certain claims may not.'' \143\ For instance, generic claim language in 
the original disclosure does not satisfy the written description 
requirement if it fails to support the scope of the genus claimed.\144\ 
For example, in LizardTech, the claim was directed to a method of 
compressing digital images using seamless discrete wave transformation 
(``DWT''). The court found that the claim covered all ways of 
performing DWT-based compression processes that lead to a seamless DWT 
because there were no limitations as to how the seamless DWT was to be 
accomplished.\145\ However, the specification provided only one method 
for creating a seamless DWT, and there was no evidence that the 
specification contemplated a more generic way of creating a seamless 
array of DWT coefficients. Therefore, the written description 
requirement was not satisfied in this case because the specification 
did not provide sufficient evidence that the inventor invented the 
generic claim.\146\
    In addition, original claims may fail to satisfy the written 
description requirement when the invention is claimed and described in 
functional language but the specification does not sufficiently 
identify how the invention achieves the claimed function.\147\ In 
Ariad, the court recognized the problem of using functional claim 
language without providing in the specification examples of species 
that achieve the claimed function:


[[Page 7171]]


    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 has made a 
generic invention that achieves the claimed result and do so by 
showing that the applicant has invented species sufficient to 
support a claim to the functionally-defined genus.\148\

    The level of detail required to satisfy the written description 
requirement varies depending on the nature and scope of the claims and 
on the complexity and predictability of the relevant technology.\149\ 
Computer-implemented inventions are often disclosed and claimed in 
terms of their functionality. This is because writing computer 
programming code for software to perform specific functions is normally 
within the skill of the art once those functions have been adequately 
disclosed.\150\ Nevertheless, for computer-implemented inventions, the 
determination of the sufficiency of disclosure will require an inquiry 
into both the sufficiency of the disclosed hardware as well as the 
disclosed software due to the interrelationship and interdependence of 
computer hardware and software.\151\ For instance, in In re Hayes 
Microcomputer Products, the written description requirement was 
satisfied because the specification disclosed the specific type of 
microcomputer used in the claimed invention as well as the necessary 
steps for implementing the claimed function. The disclosure was in 
sufficient detail such that one skilled in the art would know how to 
program the microprocessor to perform the necessary steps described in 
the specification.\152\ Two additional observations made by the Federal 
Circuit in Hayes are important. First, the Federal Circuit stressed 
that the written description requirement was satisfied because the 
particular steps, i.e., algorithm, necessary to perform the claimed 
function were ``described in the specification.'' \153\ Second, the 
Court acknowledged that the level of detail required for the written 
description requirement to be met is case specific.\154\
    When examining computer-implemented functional claims, examiners 
should determine whether the specification discloses the computer and 
the algorithm (e.g., the necessary steps and/or flowcharts) that 
perform the claimed function in sufficient detail such that one of 
ordinary skill in the art can reasonably conclude that the inventor 
invented the claimed subject matter. Specifically, if one skilled in 
the art would know how to program the disclosed computer to perform the 
necessary steps described in the specification to achieve the claimed 
function and the inventor was in possession of that knowledge, the 
written description requirement would be satisfied.\155\ If the 
specification does not provide a disclosure of the computer and 
algorithm in sufficient detail to demonstrate to one of ordinary skill 
in the art that the inventor possessed the invention including how to 
program the disclosed computer to perform the claimed function, a 
rejection under Sec.  112, ] 1 for lack of written description must be 
made. For more information regarding the written description 
requirement, see MPEP Sec.  2161.01- 2163.07(b).
    II. Determining Whether the Full Scope of a Computer-Implemented 
Functional Claim Limitation Is Enabled: To satisfy the enablement 
requirement of Sec.  112, ] 1, the specification must teach those 
skilled in the art how to make and use the full scope of the claimed 
invention without ``undue experimentation.'' \156\ In In re Wands, the 
court set forth the following factors to consider when determining 
whether undue experimentation is needed: (1) The breadth of the claims; 
(2) the nature of the invention; (3) the state of the prior art; (4) 
the level of one of ordinary skill; (5) the level of predictability in 
the art; (6) the amount of direction provided by the inventor; (7) the 
existence of working examples; and (8) the quantity of experimentation 
needed to make or use the invention based on the content of the 
disclosure.\157\ The undue experimentation determination is not a 
single factual determination. Rather, it is a conclusion reached by 
weighing all the factual considerations.\158\
    Functional claim language may render the claims broad when the 
claim is not limited to any particular structure for performing the 
claimed function.\159\ Since such a claim covers all devices which 
perform the recited function, there is a concern regarding whether the 
scope of enablement provided to one skilled in the art by the 
disclosure is commensurate with the scope of protection sought by the 
claim.\160\ Applicants who present broad claim language must ensure the 
claims are fully enabled. Specifically, the scope of the claims must be 
less than or equal to the scope of the enablement provided by the 
specification.\161\
    For example, the claims in Sitrick were directed to ``integrating'' 
or ``substituting'' a user's audio signal or visual image into a pre-
existing video game or movie. While the claims covered both video games 
and movies, the specification only taught the skilled artisan how to 
substitute and integrate user images into video games. The Federal 
Circuit held that the specification failed to enable the full scope of 
the claims because the skilled artisan could not substitute a user 
image for a preexisting character image in movies without undue 
experimentation. Specifically, the court recognized that one skilled in 
the art could not apply the teachings of the specification regarding 
video games to movies, because movies, unlike video games, do not have 
easily separable character functions. Because the specification did not 
teach how the substitution and integration of character functions for a 
user image would be accomplished in movies, the claims were not 
enabled.\162\
    Although the specification need not teach what is well known in the 
art, applicant cannot rely on the knowledge of one skilled in the art 
to supply information that is required to enable the novel aspect of 
the claimed invention, when the enabling knowledge is in fact not known 
in the art.\163\ The Federal Circuit has stated that `` `[i]t is the 
specification, not the knowledge of one skilled in the art, that must 
supply the novel aspects of an invention in order to constitute 
adequate enablement.' '' \164\ The rule that a specification need not 
disclose what is well known in the art is ``merely a rule of 
supplementation, not a substitute for a basic enabling disclosure.'' 
\165\ Therefore, the specification must contain the information 
necessary to enable the novel aspects of the claimed invention.\166\ 
For instance, in Auto. Techs., the claim limitation ``means responsive 
to the motion of said mass'' was construed to include both mechanical 
side impact sensors and electronic side impact sensors for performing 
the function of initiating an occupant protection apparatus.\167\ The 
specification did not disclose any discussion of the details or 
circuitry involved in the electronic side impact sensor, and thus, it 
failed to apprise one of ordinary skill how to make and use the 
electronic sensor. Since the novel aspect of the invention was side 
impact sensors, the patentee could not rely on the knowledge of one 
skilled in the art to supply the missing information.\168\
    A rejection under Sec.  112, ] 1 for lack of enablement must be 
made when the specification does not enable the full scope of the 
claim. USPTO personnel should establish a reasonable basis to question 
the enablement provided for the claimed invention and provide reasons 
for the uncertainty of the enablement. For more information

[[Page 7172]]

regarding the enablement requirement, see MPEP Sec. Sec.  2161.01, 
2164.01(a)-2164.08(c), e.g., 2164.06(c) on examples of computer 
programming cases.
    III. Determining Whether a Computer-Implemented Functional Claim 
Limitation Is Patentable Over the Prior Art Under Sec. Sec.  102 and 
103: Functional claim language that is not limited to a specific 
structure covers all devices that are capable of performing the recited 
function. Therefore, if the prior art discloses a device that can 
inherently perform the claimed function, a rejection under Sec.  102 or 
103 may be appropriate.\169\ See MPEP Sec. Sec.  2112 and 2114 for more 
information.
    Computer-implemented functional claim limitations may also be broad 
because the term ``computer'' is commonly understood by one of ordinary 
skill in the art to describe a variety of devices with varying degrees 
of complexity and capabilities.\170\ Therefore, a claim containing the 
term ``computer'' should not be construed as limited to a computer 
having a specific set of characteristics and capabilities, unless the 
term is modified by other claim terms or clearly defined in the 
specification to be different from its common meaning.\171\ In In re 
Paulsen, the claims, directed to a portable computer, were rejected as 
anticipated under Sec.  102 by a reference that disclosed a calculator, 
because the term ``computer'' was given the broadest reasonable 
interpretation consistent with the specification to include a 
calculator, and a calculator was considered to be a particular type of 
computer by those of ordinary skill in the art.\172\
    When determining whether a computer-implemented functional claim is 
obvious, examiners should note that broadly claiming an automated means 
to replace a manual function to accomplish the same result does not 
distinguish over the prior art.\173\ Furthermore, implementing a known 
function on a computer has been deemed obvious to one of ordinary skill 
in the art if the automation of the known function on a general purpose 
computer is nothing more than the predictable use of prior art elements 
according to their established functions.\174\ Likewise, it has been 
found to be obvious to adapt an existing process to incorporate 
Internet and Web browser technologies for communicating and displaying 
information because these technologies had become commonplace for those 
functions.\175\
    For more information on the obviousness determination, see MPEP 
Sec.  2141 and Examination Guidelines Update: Developments in the 
Obviousness Inquiry after KSR v. Teleflex, 75 FR 53643 (Sept. 1, 2010).

    Dated: January 21, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
    \1\ In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re 
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (``During patent 
examination the pending claims must be interpreted as broadly as 
their terms reasonably allow.'').
    \2\ In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 
2010); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007). In Buszard, 
the claim was directed to a flame retardant composition comprising a 
flexible polyurethane foam reaction mixture. Id. at 1365. The 
Federal Circuit found that the Board's interpretation that equated a 
``flexible'' foam with a crushed ``rigid'' foam was not reasonable. 
Id. at 1367. Persuasive argument was presented that persons 
experienced in the field of polyurethane foams know that a flexible 
mixture is different than a rigid foam mixture. Id. at 1366.
    \3\ In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (the 
USPTO looks to the ordinary use of the claim terms taking into 
account definitions or other ``enlightenment'' contained in the 
written description); But c.f. In re Am. Acad. of Sci. Tech. Ctr., 
367 F.3d 1359, 1369 (Fed. Cir. 2004) (``We have cautioned against 
reading limitations into a claim from the preferred embodiment 
described in the specification, even if it is the only embodiment 
described, absent clear disclaimer in the specification.'').
    \4\ See, e.g., Exxon Research and Eng'g Co. v. United States, 
265 F.3d 1371, 1375 (Fed. Cir. 2001).
    \5\ Morris, 127 F.3d at 1054; Zletz, 893 F.2d at 321-322.
    \6\ Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (Bd. Pat. App. & 
Int. 2008) (precedential); In re Am. Acad. of Sci. Tech Center, 367 
F.3d 1359, 1369 (Fed. Cir. 2004) (``However, the Board is required 
to use a different standard for construing claims than that used by 
district courts.'').
    \7\ Burlington Indus. Inc. v. Quigg, 822 F.2d 1581, 1583 (Fed. 
Cir. 1987) (``Issues of judicial claim construction such as arise 
after patent issuance, for example during infringement litigation, 
have no place in prosecution of pending claims before the PTO, when 
any ambiguity or excessive breadth may be corrected by merely 
changing the claim.'') (emphasis added).
    \8\ Zletz, 893 F.2d at 322.
    \9\ See Memorandum entitled ``Indefiniteness rejections under 35 
U.S.C. 112, second paragraph'' available at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_112_6th_09_02_2008.pdf.
    \10\ 35 U.S.C. 112, ] 6; see also In re Donaldson Co., 16 F.3d 
1189, 1193 (Fed. Cir. 1994) (en banc) (``[W]e hold that paragraph 
six applies regardless of the context in which the interpretation of 
means-plus-function language arises, i.e., whether as part of a 
patentability determination in the PTO or as part of a validity or 
infringement determination in a court.'').
    \11\ See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. 
Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002).
    \12\ Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 
1255 (Fed. Cir. 2008) (emphasis added).
    \13\ Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 
1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, 
Inc., 806 F.2d 1565 (Fed. Cir. 1986). In Orthokinetics, a claim 
directed to a wheel chair included the phrase ``so dimensioned as to 
be insertable through the space between the doorframe of an 
automobile and one of the seats thereof.'' Id. at 1568. The court 
found the phrase to be as accurate as the subject matter permits, 
since automobiles are of various sizes. Id. at 1576. ``As long as 
those of ordinary skill in the art realized the dimensions could be 
easily obtained, Sec.  112, 2d ] requires nothing more.'' Id.
    \14\ Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1318 
(Fed. Cir. 2005).
    \15\ In re Swinehart, 439 F.2d 210, 212 (CCPA 1971); see also 
MPEP Sec.  2173.05(g).
    \16\ Swinehart, 439 F.2d at 212; see also Halliburton Energy 
Servs., 514 F.3d at 1255.
    \17\ See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 
(Fed. Cir. 1999).
    \18\ Phillips v. AWH Corp, 415 F.3d 1303, 1311 (Fed. Cir. 2005) 
(en banc) (``Means-plus-function claiming applies only to purely 
functional limitations that do not provide the structure that 
performs the recited function.'').
    \19\ In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
    \20\ Id.
    \21\ Swinehart, 439 F.2d at 213.
    \22\ Halliburton Energy Servs., 514 F.3d at 1255 (noting that 
the Supreme Court explained that a vice of functional claiming 
occurs ``when the inventor is painstaking when he recites what has 
already been seen, and then uses conveniently functional language at 
the exact point of novelty'') (quoting General Elec. Co. v. Wabash 
Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon 
Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) (holding 
indefinite claims that recited substantially pure carbon black ``in 
the form of commercially uniform, comparatively small, rounded 
smooth aggregates having a spongy or porous exterior'').
    \23\ Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 
(Fed. Cir. 2010) (en banc).
    \24\ In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983).
    \25\ Ariad, 598 F.3d at 1340.
    \26\ Hyatt, 708 F.2d at 714-715.
    \27\ Halliburton Energy Servs., 514 F.3d at 1255.
    \28\ Id. at 1255-56.
    \29\ General Elec. Co., 304 U.S. at 370-71, 375.
    \30\ Id. at 370.
    \31\ United Carbon Co., 317 U.S. at 234.
    \32\ Id. at 233.
    \33\ Swinehart, 439 F.2d at 214.
    \34\ In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
    \35\ Halliburton Energy Servs., 514 F.3d at 1255-56.

[[Page 7173]]

    \36\ Id. at 1256 (citing Oakley, Inc. v. Sunglass Hut Int'l, 316 
F.3d 1331, 1341 (Fed. Cir. 2003)).
    \37\ Marosi, 710 F.2d at 803.
    \38\ Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 
(Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 
1325, 1332 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating 
& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
    \39\ See MPEP Sec.  2173.05(b).
    \40\ See, e.g., Young v. Lumenis, Inc., 492 F.3d 1336, 1346 
(Fed. Cir. 2007); Exxon Research, 265 F.3d at 1381.
    \41\ Enzo Biochem, 599 F.3d at 1335 (noting that applicant 
overcame an indefiniteness rejection over ``not interfering 
substantially'' claim language by submitting a declaration under 37 
CFR 1.132 listing eight specific linkage groups that applicant 
declared did not substantially interfere with hybridization or 
detection).
    \42\ In re Musgrave, 431 F.2d 882, 893 (CCPA 1970).
    \43\ Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 
1350 (Fed. Cir. 2005).
    \44\ Id. at 1344-45.
    \45\ Id. at 1352.
    \46\ Id. at 1350.
    \47\ In re Harnisch, 631 F.2d 716, 719-20 (CCPA 1980); Ex parte 
Markush, 1925 Dec. Comm'r Pat. 126, 127 (1924).
    \48\ In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (``Breadth is 
not indefiniteness.'').
    \49\ Harnisch, 631 F.2d at 721.
    \50\ Id. at 722.
    \51\ See MPEP Sec.  803.02.
    \52\ See id. for more information on election of species.
    \53\ 35 U.S.C. 112, ]4 (``Subject to the following paragraph, a 
claim in dependent form shall contain a reference to a claim 
previously set forth and then specify a further limitation of the 
subject matter claimed. A claim in dependent form shall be construed 
to incorporate by reference all the limitations of the claim to 
which it refers.'').
    \54\ Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 
(Fed. Cir. 2006) (holding a dependent claim in a patent invalid for 
failure to comply with Sec.  112, ]4).
    \55\ Id.
    \56\ Id.
    \57\ Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 
1374, 1380 (Fed. Cir. 2006) (stating that ``reading an additional 
limitation from a dependent claim into an independent claim would 
not only make that additional limitation superfluous, it might 
render the dependent claim invalid'' for failing to add a limitation 
to the claim upon which it depends, as required by Sec.  112, ]4).
    \58\ See, e.g., Bancorp Servs., L.L.C. v. Hartford Life Ins. 
Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004).
    \59\ Id.
    \60\ See MPEP Sec. Sec.  608.01(o) and 2181.
    \61\ In re Cohn, 438 F.2d 989, 993 (CCPA 1971); In re Moore, 439 
F.2d 1232, 1235-36 (CCPA 1971); MPEP Sec.  2173.03.
    \62\ In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. Jan. 6, 
1997) (unpublished).
    \63\ Cohn, 438 F.2d at 993.
    \64\ Id.
    \65\ Id.
    \66\ TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259-60 (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 (Fed. Cir. 2003).
    \67\ See, e.g., Phillips, 415 F.3d at 1311; CCS Fitness, Inc. v. 
Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002); Personalized 
Media Commc'ns, LLC v. ITC, 161 F.3d 696, 703-04 (Fed. Cir. 1998).
    \68\ Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 
1354, 1358 (2004).
    \69\ Id. at 1360.
    \70\ Id.; Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 
1372-73 (Fed. Cir. 2003); CCS Fitness, 288 F.3d at 1369; Watts v. XL 
Sys. Inc., 232 F.3d 877, 800 (Fed. Cir. 2000); Personalized Media, 
161 F.3d at 704; Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 
1580, 1583 (Fed. Cir. 1996) (``Many devices take their names from 
the functions they perform.'').
    \71\ Watts, 232 F.3d at 800.
    \72\ Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. 
Cir. 2008); Massachusetts Inst. of Tech. v. Abacus Software, 462 
F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 
704; Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215 
(Fed. Cir. 1998).
    \73\ Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 
1321 (Fed. Cir. 2004); Apex, 325 F.3d at 1373.
    \74\ Greenberg, 91 F.3d at 1583-84.
    \75\ Personalized Media, 161 F.3d at 704-05.
    \76\ CCS Fitness, 288 F.3d at 1369-70.
    \77\ Lighting World, 382 F.3d at 1358-63.
    \78\ Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 
1996).
    \79\ Watts, 232 F.3d at 881.
    \80\ Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318-19 
(Fed. Cir. 1999).
    \81\ Greenberg, 91 F.3d at 1583 (holding that the term ``detent 
mechanism'' did not to invoke Sec.  112, ]6 because the structural 
modifier ``detent'' denotes a type of structural device with a 
generally understood meaning in the mechanical arts).
    \82\ Massachusetts Inst. of Tech., 462 F.3d at 1354; Mas-
Hamilton, 156 F.3d at 1214-1215.
    \83\ Ex parte Rodriguez, 92 USPQ2d 1395, 1404 (Bd. Pat. App. & 
Int. 2009) (precedential).
    \84\ See Memorandum entitled ``Rejections under 35 U.S.C. 112, 
second paragraph, when examining means (or step) plus function claim 
limitations under 35 U.S.C. 112, sixth paragraph'' available at 
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_112_6th_09_02_2008.pdf.
    \85\ The claimed function may include the functional language 
that precedes the phrase ``means for.'' Baran v. Medical Device 
Techs., Inc., No. 2010-1058, slip op. at 12-13 (Fed. Cir. Aug. 12, 
2010).
    \86\ 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 (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 
(Fed. Cir. 2010); Atmel Corp. v. Info. Storage Devices, Inc., 198 
F.3d 1374, 1381 (Fed. Cir. 1999).
    \87\ Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 
1338 (Fed. Cir. 2008); Med. Instrumentation & Diagnostics Corp. v. 
Elekta AB, 344 F.3d 1205, 1211-12 (Fed. Cir. 2003).
    \88\ Telcordia Techs., Inc. v. Cisco Systems, Inc., No. 2009-
1175, 2009-1184, slip op. at 19 (Fed. Cir. July 6, 2010).
    \89\ Donaldson, 16 F.3d at 1195.
    \90\ Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953 
(Fed. Cir. 2007).
    \91\ See Memorandum entitled ``Rejections under 35 U.S.C. 112, 
second paragraph, when examining means (or step) plus function claim 
limitations under 35 U.S.C. 112, sixth paragraph'' available at 
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_112_6th_09_02_2008.pdf.
    \92\ See MPEP Sec.  704.11(a) (Example R).
    \93\ For more information, see MPEP Sec.  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.'')
    \94\ 35 U.S.C. 112, ]6.
    \95\ Welker Bearing, 550 F.3d at 1097; Wenger Mfg., Inc. v. 
Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001).
    \96\ Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 
521 F.3d 1328, 1333 (Fed. Cir. 2008).
    \97\ Id.
    \98\ Id.; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 
1340 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int'l Game Tech., 184 
F.3d 1339, 1349 (Fed. Cir. 1999).
    \99\ Aristocrat, 521 F.3d at 1333.
    \100\ Id. at 1338.
    \101\ Microsoft Computer Dictionary, Microsoft Press, 5th 
edition, 2002.
    \102\ Finisar, 523 F.3d at 1340; see also Intel Corp. v. VIA 
Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); In re Dossel, 
115 F.3d 942, 946-47 (1997); MPEP Sec.  2181.
    \103\ Aristocrat, 521 F.3d at 1337-38.
    \104\ Id. at 1334.
    \105\ Finisar, 523 F.3d at 1340-41.
    \106\ Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 
1383-1385 (Fed. Cir. 2009); Net MoneyIN, Inc. v. VeriSign, Inc., 545 
F.3d 1359, 1366-67 (Fed. Cir. 2008); Rodriguez, 92 USPQ2d at 1405-
06.
    \107\ See, e.g., Blackboard, 574 F.3d at 1385; Biomedino, 490 
F.3d at 952; Atmel Corp., 198 F.3d at 1380.
    \108\ Blackboard, 574 F.3d at 1385 (``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 
(``[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.'').

[[Page 7174]]

    \109\ Blackboard, 574 F.3d at 1384 (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. 
Appx. 389, 394-95, 2009 U.S. App. Lexis. 26358, 10-16 (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).
    \110\ Aristocrat, 521 F.3d at 1337; AllVoice Computing PLC v. 
Nuance Commc'ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007); Intel 
Corp., 319 F.3d at 1366-67 (knowledge of a person of ordinary skill 
in the art can be used to make clear how to implement a disclosed 
algorithm).
    \111\ Aristocrat, 521 F.3d at 1338.
    \112\ See MPEP Sec.  1302.14(I).
    \113\ See MPEP Sec.  707.07(f).
    \114\ See MPEP Sec.  706.03, 707.07(g).
    \115\ See MPEP Sec.  2173.02.
    \116\ Halliburton Energy Servs., 514 F.3d at 1249.
    \117\ In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007); see 
also Yamamoto, 740 F.2d at 1571; Zletz, 893 F.2d at 322.
    \118\ See MPEP Sec.  2173.05(a)(I).
    \119\ See MPEP Sec.  2173.02 (citing Morton Int 'l, Inc. v. 
Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993)); see also 
Halliburton Energy Servs., 514 F.3d at 1249 (``Otherwise, 
competitors cannot avoid infringement, defeating the public notice 
function of patent claims.'').
    \120\ Zletz, 893 F.2d at 322.
    \121\ See MPEP Sec.  707.07(d).
    \122\ See, e.g., In re Skvorecz, 580 F.3d 1262, at 1268-69 (Fed. 
Cir. 2009).
    \123\ Halliburton Energy Servs., 514 F.3d at 1255.
    \124\ See MPEP Sec.  2173.02.
    \125\ See MPEP Sec.  706; see also Best Practices in Compact 
Prosecution (2009) examiner training materials, available at http://www.uspto.gov/patents/law/exam/exmr_training_materials.jsp.
    \126\ See 37 CFR 1.104(a)(1) (``On taking up an application for 
examination or a patent in a reexamination proceeding, the examiner 
shall make a thorough study thereof and shall make a thorough 
investigation of the available prior art relating to the subject 
matter of the claimed invention. The examination shall be complete 
with respect both compliance of the application * * * with the 
applicable statutes and rules and to the patentability of the 
invention as claimed, as well as with respect to matters of form, 
unless otherwise indicated.'').
    \127\ See MPEP Sec.  707.07(g) (``Piecemeal examination should 
be avoided as much as possible. The examiner ordinarily should 
reject each claim on all valid grounds available * * * .'').
    \128\ See Examiner Interview Training (2009) examiner training 
materials, available at http://www.uspto.gov/patents/law/exam/exmr_training_materials.jsp.
    \129\ See MPEP Sec.  713.04; see also 37 CFR 1.2 (``The action 
of the Patent and Trademark Office will be based exclusively on the 
written record in the Office. No attention will be paid to any 
alleged oral promise, stipulation, or understanding in relation to 
which there is disagreement or doubt.'').
    \130\ Note that, prior to allowance, the examiner may also 
specify allowable subject matter and provide reasons for indicating 
such allowable subject matter in an Office communication. See MPEP 
Sec.  1302.14(I).
    \131\ Id.
    \132\ Id.
    \133\ See MPEP Sec.  1302.14(II)(G).
    \134\ See MPEP Sec.  1302.14(I).
    \135\ For determining whether claimed subject matter complies 
with the subject matter eligibility requirement of Sec.  101, 
examiners should consult the Interim Guidance for Determining 
Subject Matter Eligibility for Process Claims in View of Bilski v. 
Kappos, 75 FR 43922 (July 27, 2010), and Memorandum entitled New 
Interim Patent Subject Matter Eligibility Examination Instructions, 
signed on August 24, 2009, available at http://www.uspto.gov/patents/law/exam/memoranda.jsp.
    \136\ For determining whether claimed subject matter complies 
with the utility requirement of Sec.  101, examiners should consult 
the ``Guidelines for Examination of Applications for Compliance with 
the Utility Requirement'' set forth in MPEP Sec.  2107.
    \137\ For determining whether claimed subject matter complies 
with the written description requirement of Sec.  112, ]1, examiners 
should consult the ``Computer Programming and 35 U.S.C. Sec.  112, 
First Paragraph, Guidelines'' set forth in MPEP Sec.  2161.01, and 
the ``Guidelines for the Examination of Patent Applications Under 
the 35 U.S.C. 112, para. 1, `Written Description' Requirement'' set 
forth in MPEP Sec.  2163, and for determining whether claimed 
subject matter complies with the enablement requirement of Sec.  
112, ]1, examiners should consult the enablement guidelines set 
forth in MPEP Sec.  2164 et seq., including the ``Examples of 
Enablement Issues--Computer Programming Cases'' set forth in MPEP 
Sec.  2164.06(c) and ``Enablement Commensurate in Scope With the 
Claims'' set forth in MPEP Sec.  2164.08.
    \138\ For determining whether the claims comply with the 
nonobviousness requirement of Sec.  103, examiners should use 
``Examination Guidelines for Determining Obviousness Under 35 U.S.C. 
103'' set forth in MPEP Sec.  2141 and Examination Guidelines 
Update: Developments in the Obviousness Inquiry after KSR v. 
Teleflex, 75 FR 53643 (Sept. 1, 2010).
    \139\ Ariad, 598 F.3d at 1340.
    \140\ Vas-Cath, 935 F.2d at 1562-63.
    \141\ Id.; Ariad, 598 F.3d at 1351.
    \142\ Ariad, 598 F.3d at 1349.
    \143\ Id.; see also LizardTech, Inc. v. Earth Res. Mapping, 
Inc., 424 F.3d 1336, 1343-46 (Fed. Cir. 2005); Regents of the 
University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 
(Fed. Cir. 1997).
    \144\ Ariad, 598 F.3d at 1350; Enzo Biochem, 323 F.3d at 968 
(holding that generic claim language appearing in ipsis verbis in 
the original specification did not satisfy the written description 
requirement because it failed to support the scope of the genus 
claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) 
(rejecting the argument that ``only similar language in the 
specification or original claims is necessary to satisfy the written 
description requirement'').
    \145\ LizardTech, 424 F.3d at 1346 (``[T]he description of one 
method for creating a seamless DWT does not entitle the inventor * * 
* to claim any and all means for achieving that objective.'').
    \146\ Id.
    \147\ Ariad, 598 F.3d at 1349 (``[A]n adequate written 
description of a claimed genus requires more than a generic 
statement of an invention's boundaries.'') (citing Eli Lilly, 119 
F.3d at 1568).
    \148\ Id.
    \149\ Id. at 1351; Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. 
Cir. 2005).
    \150\ Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1549 
(Fed. Cir. 1997).
    \151\ See MPEP Sec.  2161.01.
    \152\ In re Hayes Microcomputer Prods., Inc. Patent Litigation, 
982 F.2d 1527, 1533-34 (Fed. Cir. 1992).
    \153\ Id. at 1534 (emphasis in original).
    \154\ Id.
    \155\ Id.
    \156\ See, e.g., In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 
1993); In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988).
    \157\ Wands, 858 F.2d at 737.
    \158\ Id.
    \159\ Swinehart, 439 F.2d at 213.
    \160\ Id.; AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. 
Cir. 2003); In re Moore, 439 F.2d 1232, 1236 (CCPA 1971).
    \161\ Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 
2008) (``The scope of the claims must be less than or equal to the 
scope of the enablement to ensure that the public knowledge is 
enriched by the patent specification to a degree at least 
commensurate with the scope of the claims.'') (quotation omitted).
    \162\ Sitrick, 516 F.3d at 999-1001.
    \163\ ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 941 (Fed. 
Cir. 2010) (``ALZA was required to provide an adequate enabling 
disclosure in the specification; it cannot simply rely on the 
knowledge of a person of ordinary skill to serve as a substitute for 
the missing information in the specification.''); Auto. Techs. 
Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 
2007) (``Although the knowledge of one skilled in the art is indeed 
relevant, the novel aspect of an invention must be enabled in the 
patent.'').
    \164\ Auto. Techs., 501 F.3d at 1283 (quoting Genentech, Inc. v. 
Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997)).
    \165\ Genentech, 108 F.3d at 1366; see also ALZA Corp., 603 F.3d 
at 940-41.
    \166\ ALZA Corp., 603 F.3d at 941; Auto. Techs., 501 F.3d at 
1283-84 (``[T]he `omission of minor details does not cause a 
specification to fail to meet the enablement requirement. However, 
when there is no disclosure of any specific stating material or of 
any of the conditions under which a process can be carried out, 
undue experimentation is required.' '') (quoting Genentech,108 F.3d 
at 1366).
    \167\ Auto. Techs., 501 F.3d at 1282.
    \168\ Id. at 1283.
    \169\ Schreiber, 128 F.3d at 1478; In re Best, 562 F.2d 1252, 
1254 (CCPA 1977); In re

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Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); Swinehart, 439 F.2d at 
212-213(``[I]t is elementary that the mere recitation of a newly 
discovered function or property, inherently possessed by things in 
the prior art, does not cause a claim drawn to those things to 
distinguish over the prior art. Additionally, where the Patent 
Office has reason to believe that a functional limitation asserted 
to be critical for establishing novelty in the claimed subject 
matter may, in fact, be an inherent characteristic of the prior art, 
it possesses the authority to require the applicant to prove that 
the subject matter shown to be in the prior art does not possess the 
characteristic relied on.'').
    \170\ In re Paulsen, 30 F.3d 1475, 1479-80 (Fed. Cir. 1994).
    \171\ Id.
    \172\ Id.
    \173\ Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 
1157, 1161 (Fed. Cir. 2007) (``Accommodating a prior art mechanical 
device that accomplishes [a desired] goal to modern electronics 
would have been reasonably obvious to one of ordinary skill in 
designing children's learning devices. Applying modern electronics 
to older mechanical devices has been commonplace in recent 
years.''); In re Venner, 262 F.2d 91, 95 (CCPA 1958); see also MPEP 
Sec.  2144.04.
    \174\ KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); 
see also MPEP Sec.  2143, Exemplary Rationales D and F.
    \175\ Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326-27 
(Fed. Cir. 2008).

[FR Doc. 2011-2841 Filed 2-8-11; 8:45 am]
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