DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
RIN 0651-AB23
Supplemental Examination Guidelines for Determining the
Applicability of 35 U.S.C. 112, 6
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Notice
SUMMARY: The U.S. Patent and Trademark Office (USPTO) is publishing the
final supplemental examination guidelines to be used by Office personnel
in their review of patent applications to determine (1) whether a claim
limitation invokes 35 U.S.C. 112, 6, and (2) whether the written
description describes adequate corresponding structure, material, or
acts needed to support a claim limitation under 35 U.S.C. 112, 6.
Because these supplemental examination guidelines are interpretive rules
and general statements of policy, they are exempt from notice and
comments rulemaking under 5 U.S.C. 553(b)(A).
DATES: The supplemental examination guidelines are effective June 21,
2000.
FOR FURTHER INFORMATION CONTACT: Magdalen Greenlief, by mail addressed
to Box Comments, Commissioner for Patents, Washington, DC 20231, or Ray
Chen, Office of the Solicitor, P.O. Box 15667, Arlington, Virginia
22215, or by facsimile transmission to (703) 305-8825, or by electronic
mail at magdalen.greenlief@uspto.gov or ray.chen@uspto.gov.
SUPPLEMENTARY INFORMATION: The USPTO published "Interim Supplemental
Examination Guidelines for Determining the Applicability of 35 U.S.C.
112 6" in the Federal Register on July 30, 1999, at 64 FR 41392,
requesting comments from the public on the supplemental examination
guidelines. The interim supplemental examination guidelines are adopted
with modifications as suggested by some of the commentors noted below.
In particular, (1) a statement has been added to the supplemental
examination guidelines to clearly state that the guidelines do not
constitute substantive rulemaking and hence do not have the force and
effect of law, (2) the third prong of the 3-prong analysis for
determining whether a claim limitation invokes 35 U.S.C. 112, 6
has been modified to indicate that the phrase "means for" or "step for"
must not be modified by sufficient structure, material, or acts for
achieving the specified function, and (3) the last step of the process
for making a prima facie case of equivalence of a prior art element
during ex parte examination has been modified to state that where the
examiner finds that the prior art element is an equivalent of the
means-(or step-) plus- function limitation, the examiner should provide
an explanation and rationale as to why the prior art element is an
equivalent.
Discussion of Public Comments
Comments were received by the USPTO from three individuals, two bar
associations, one law firm and one corporation in response to the
request for comments on the interim supplemental examination guidelines.
All comments have been fully considered. One comment was directed to
Markush-type claims which is not germane to the subject matter addressed
in these guidelines and thus, a response has not been included in the
discussion below. One comment indicated that the supplemental
examination guidelines will work well since under the supplemental
examination guidelines applicants can clearly invoke or not invoke 35
U.S.C. 112, 6 and examiners can clearly determine whether or not
35 U.S.C. 112, 6 has been invoked. Other comments generally
supported the 3-prong analysis, but with certain modifications.
Comment 1: One comment indicated that it is not clear whether the
guidelines are interpretative and without force of law, or are intended
to be rules or regulations (or their equivalent) issued under 35 U.S.C.
6 and having the force of law. The commentor suggested that a specific
statement be made as to the intent of the Office.
Response: The suggestion has been adopted. As stated in the
"Supplementary Information" portion of the interim supplemental
examination guidelines, these supplemental examination guidelines are
interpretative rules and general statements of policy, and therefore,
are exempt from notice and comment rulemaking under 5 U.S.C. 553(b)(A).
The USPTO will further include a statement in the body of the guidelines
to clearly state that the guidelines do not constitute substantive
rulemaking and hence do not have the force and effect of law.
Comment 2: One comment stated that the proposed guidelines put a great
deal of emphasis on form over substance since a "means" is a means
whether one uses that word or not.
Response: The Federal Circuit has stated that when an element of a claim
does not use the term "means," treatment as a means-plus-function claim
element is generally not appropriate. See Kemco Sales, Inc. v. Control
Papers Co., 54 USPQ2d 1308, 1313 (Fed. Cir. 2000) ("absence of the word
`means' creates a presumption that section 112, paragraph 6 has not been
invoked"), Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318, 50
USPQ2d 1161, 1166 (Fed. Cir. 1999) ("when an element of a claim does not
use the term `means,' treatment as a means-plus-function claim element
is generally not appropriate"), Mas-Hamilton Group v. LaGard, Inc., 156
F.3d 1206, 1213-15, 48 USPQ2d 1010, 1016-18 (Fed. Cir. 1998), and
Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580, 1584, 39 USPQ2d
1783, 1787 (Fed. Cir. 1996) ("use of the term `means' (particularly as
used in the phrase `means for') generally invokes section 112(6) and
that the use of a different formulation generally does not"). Even if
the term "means" was used, the Federal Circuit has held, in certain
circumstances, that the claim limitation does not invoke 35 U.S.C.
112, 6. See Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294,
1303-04, 50 USPQ2d 1429, 1435-36 (Fed. Cir. 1999) (holding "positioning
means for moving" does not invoke 35 U.S.C. 112, 6), and Cole v.
Kimberly-Clark Corp., 102 F.3d 524, 530-31, 41 USPQ2d 1001, 1006 (Fed.
Cir. 1996) (claim limitation "perforation means.for tearing" does not
invoke 35 U.S.C. 112, 6). The supplemental examination guidelines
provide applicants with a simple method for clearly stating their intent
to invoke 35 U.S.C. 112, 6. The specific phraseology used by the
applicant in a claim limitation will determine whether the claim
limitation invokes 35 U.S.C. 112, 6. Furthermore, by following
the plain language of the statute, the language employed in the patent
claim(s) will place the public on notice whether a claim limitation
invokes 35 U.S.C. 112, 6.
Comment 3: One comment stated that the guidelines are contrary to
statute and to the court interpretations of the statute since the
Federal Circuit has expressly held that a claim is to be interpreted as
under 35 U.S.C. 112, 6 even if the word "means" is not used as
long as there is an object disclosed (i.e., a means) coupled with a
function (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 220 USPQ 592
(Fed. Cir. 1983)).
Response: The USPTO believes that the supplemental examination
guidelines are consistent with the statute and controlling precedent. As
noted by the Federal Circuit in Ethicon Inc. v. United States Surgical
Corp., 135 F.3d 1456, 1463, 45 USPQ2d 1545, 1550 (Fed. Cir. 1998), cert.
denied, 525 U.S. 923 (1998), "use of the word `means' gives rise to a
`presumption that the inventor used the term advisedly to invoke the
statutory mandates for means-plus-function clauses.'" See also J.
Rader's concurring opinion in Seal-Flex, Inc. v. Athletic Track and
Court Constr., 172 F.3d 836, 849-50, 50 USPQ2d 1225, 1233-34 (Fed. Cir.
1999), stating that use of the phrase "step for" in a method claim
raises a presumption that 35 U.S.C. 112, 6 applies, whereas, use
of the word "step" by itself or the phrase "step of" does not invoke a
presumption that 35 U.S.C. 112, 6 applies. Because the scope of a
claim limitation that invokes 35 U.S.C. 112, 6 is actually more
limited than a claim limitation stated in structural terms, the Office
wants to avoid inadvertent invocations of 35 U.S.C. 112, 6. Cf.
Kemco Sales, Inc. v. Control Papers Co., 54 USPQ2d 1308, 1316 (Fed. Cir.
2000) (where sealing of a flap inside an envelope pocket was not
equivalent to sealing it outside the pocket). If a claim limitation does
not include the phrase "means for" or "step for," the examiner will not
treat that claim limitation as invoking 35 U.S.C. 112, 6. As
noted in the supplemental examination guidelines, if applicant wants
that claim limitation to be subject to the provisions of 35 U.S.C.
112, 6, applicant may do so by following the options set forth in
the explanation portion of the first prong of the 3-prong analysis. By
providing applicant with the option of making a showing that even though
the phrase is not used, the claim limitation should be treated under 35
U.S.C. 112, 6 since it is written as a function to be performed
and does not recite sufficient structure, material, or acts to perform
the claimed function, these supplemental examination guidelines are
consistent with the Federal Circuit's interpretation of 35 U.S.C.
112, 6.
Comment 4: One comment suggested that to permit a claim drafter who does
not use the phrase "means for" or "step for" to make a showing that the
claim limitation should still be treated under 35 U.S.C. 112, 6,
rather than amending the claim to include the "means for" or "step for"
phrase, is unwise. The commentor suggested that the USPTO promulgate a
rule to always require the use of the phrase "means for" or "step for"
if applicant wishes to have a claim limitation be treated under 35
U.S.C. 112, 6. The commentor further stated that it is more
important to have a clear and unambiguous, easily administered,
bright-line rule for claim interpretation than it is to have the rule
fine-tuned for tolerating all conceivable caprice in claim drafting.
Response: The suggestion has not been adopted. To promulgate a rule to
always require applicant to use the phrase "means for" or "step for" in
order to invoke 35 U.S.C. 112, ĚpA 6 without providing applicant with
an option to make a showing that even though the phrase is not used, the
claim limitation should be treated under 35 U.S.C. 112, 6 since
it is written as a function to be performed and does not recite
sufficient structure, material, or acts to perform the claimed function
would be inconsistent with the Federal Circuit's interpretation of 35
U.S.C. 112, 6. See, e.g., Mas-Hamilton Group v. LaGard, Inc., 156
F.3d 1206, 1213-14, 48 USPQ2d 1010, 1016-17 (Fed. Cir. 1998) ("lever
moving element for moving the lever" and "movable link member for
holding the lever.and for releasing the lever" were construed as
means-plus- function limitations invoking 35 U.S.C. 112, 6).
Comment 5: One comment suggested that examiners should be instructed not
to require that "means for" or "step for" language be used since
applicants should be able to decide what language they choose to use in
a claim.
Response: The suggestion has not been adopted. The USPTO wants to
provide reasonable certainty that 35 U.S.C. 112, 6 is not invoked
unless applicant wants the claim limitation to be subject to that
provision. To avoid inadvertent invocations of 35 U.S.C. 112, 6,
the supplemental examination guidelines set forth a 3-prong analysis
which must be met before a claim limitation is treated under 35 U.S.C.
112, 6. As noted in the supplemental examination guidelines, a
claim limitation that does not include the phrase "means for" or "step
for" will not be treated by the examiner as invoking the provisions of
35 U.S.C. 112, 6. In such a case, the examiner will apply prior
art to the claim limitation without the invocation of 35 U.S.C. 112,
ĚpA 6. In reply to the examiner's Office action, if applicant wishes to
have the claim limitation treated under 35 U.S.C. 112, 6,
applicant has the option to either amend the claim to include the phrase
"means for" or "step for" or to make a showing that even though the
phrase "means for" or "step for" is not used, the claim limitation is
written as a function to be performed and does not recite sufficient
structure, material, or acts to perform the claimed function. If
applicant does not wish to use the phrase "means for" or "step for,"
under the supplemental examination guidelines, applicant must show that
even though the phrase "means for" or "step for" is not used, the claim
limitation is written as a function to be performed and does not recite
sufficient structure, material, or acts for performing those functions.
See Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318, 50 USPQ2d
1161, 1166-67 (Fed. Cir. 1999) (although the claim limitations "eyeglass
hanger member" and "eyeglass contacting member" include a function,
these claim limitations do not invoke 35 U.S.C. 112, 6 because
the claims themselves contain sufficient structural limitations for
performing those functions).
Comment 6: Two comments indicated that the presence of some structure
should not prevent the invocation of the provisions of 35 U.S.C. 112,
6. The commentors suggested that the third prong of the 3-prong
analysis be modified to read that "the phrase `means for' or `step for'
must not be modified by sufficient structure, material, or acts for
achieving the claimed function," citing Seal-Flex, Inc. v. Athletic
Track and Court Constr., 172 F.3d 836, 50 USPQ2d 1225 (Fed. Cir. 1999),
and Unidynamics Corp. v. Automatic Prod. Int'l, 157 F.3d 1311, 48 USPQ2d
1099 (Fed. Cir. 1998).
Response: A review of the case law indicates that the recitation of some
structure in means-(or step-) plus-function element does not preclude
the applicability of 35 U.S.C. 112, 6 when the structure merely
serves to further specify the function of that means. See Laitram Corp.
v. Rexnord, Inc., 939 F.2d 1533, 1536, 19 USPQ2d 1367, 1369 (Fed. Cir.
1991). Therefore, the suggestion has been adopted to this extent.
Comment 7: One comment suggested that the guidelines be clarified to
indicate what happens if the applicant neither amends the claim to
include the phrase "means for" or "step for" nor makes a showing but
stands firm on the claim that the applicant initially presented and
insists that 35 U.S.C. 112, 6 authorizes the claim. The commentor
indicated that explanation of this point will benefit the applicants and
the examiners.
Response: If a claim limitation does not include the phrase "means for"
or "step for," the claim limitation will not be treated by the examiner
as invoking the provisions of 35 U.S.C. 112, 6. The examiner in
such case will apply prior art to the claim limitation without the
invocation of 35 U.S.C. 112, 6. In reply to the examiner's Office
action, if applicant either refuses to amend the claim to include the
phrase "means for" or "step for" or refuses to make a showing that even
though the phrase "means for" or "step for" is not used, the claim
limitation is written as a function to be performed and does not recite
sufficient structure, material, or acts to perform the claimed function,
the next Office action may be made final in accordance with the practice
of making a second or subsequent action final (see MPEP 706.07(a)).
Applicant may appeal the examiner's rejection to the Board of Patent
Appeals and Interferences pursuant to 35 U.S.C. 134.
Comment 8: One comment suggested that the examining corps should be
encouraged, and preferably required, to include a statement regarding 35
U.S.C. 112, 6 in all Office actions where appropriate so that
applicants may agree with or argue against the examiner's position.
Response: The suggestion is adopted in part. In those instances where a
claim limitation meets the 3-prong analysis as set forth in the
supplemental examination guidelines and is being treated under 35 U.S.C.
112, 6, the examiner will include a statement in the Office
action that the claim limitation is being treated under 35 U.S.C.
112, ĚpA 6. However, if a claim limitation does not use the phrase
"means for" or "step for," that is, the first prong of the 3-prong
analysis is not met, the examiner will not treat such a claim limitation
under 35 U.S.C. 112, 6. It will not be necessary to state in the
Office action that 35 U.S.C. 112, ĚpA 6 has not been invoked, since
the presumption is that applicant did not intend to invoke the
provisions of 35 U.S.C. 112, 6 because applicant did not use the
specific phrase "means for" or "step for." If a claim limitation does
include the phrase "means for" or "step for," that is, the first prong
of the 3-prong analysis is met, but the examiner determines that either
the second prong or the third prong of the 3-prong analysis is not met,
then in these instances, the examiner must include a statement in the
Office action explaining the reasons why a claim limitation which uses
the phrase "means for" or "step for" is not being treated under 35
U.S.C. 112, 6.
Comment 9: One comment suggested that 35 U.S.C. 112, 6 was not
intended to address functional language used for mere background and
away from the point of novelty and that the Federal Circuit has not
directly addressed the use of functional language other than when it
occurs at the point of novelty. The commentor stated that examiners need
not go through the 3-prong analysis where the functional claiming
language is not at the point of novelty since 35 U.S.C. 112, 6
does not apply to such claim limitations. The commentor further stated
that rejection for failure to use the "means for" or "step for" language
of 35 U.S.C. 112, 6 would be proper for, and only for, a claim to
subject matter that Congress intended 35 U.S.C. 112, 6 to address
(at the point of novelty). The commentor suggested that the guidelines
be modified accordingly.
Response: The suggestion has not been adopted. In a recent decision,
Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc., 54 USPQ2d 1185,
1188-90 (Fed. Cir. 2000), the Federal Circuit held that the district
court erred in concluding that the means limitations for the aerating
system could only cover new elements of the preferred embodiment. The
means-plus-function limitation was "means for aerating." The written
description disclosed both a new and inventive flexible- hose structure
and a prior art, rigid-conduit structure as corresponding structures for
performing the claimed function. The Federal Circuit read the
means-plus-function terms for the aerating system in the claims as being
capable of covering the old, rigid-conduit system as well as the new,
flexible-hose system. Furthermore, it is noted that examiners do not
reject a claim for failure to use the "means for" or "step for" language
of 35 U.S.C. 112, 6. There is no statutory basis for such a
rejection. If a claim limitation does not include the phrase "means for"
or "step for," the presumption is that applicant did not intend to
invoke 35 U.S.C. 112, 6 and the examiner will not treat the claim
limitation under 35 U.S.C. 112, 6.
Comment 10: One comment stated that where the examiner has concluded
that one skilled in the art would recognize what structure, material, or
acts perform the function, it does not make sense to require that the
applicant amend the specification to expressly recite what corresponding
structure, material, or acts perform the function recited in a claim
element. Furthermore, the commentor finds it even more troubling to have
the examiner, at his option, state on the record what structure,
material, or acts perform the claimed function since there is a danger
of unfairly limiting the scope of the claims.
Response: The USPTO disagrees with the comment. In B. Braun Medical,
Inc. v. Abbott Lab., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900 (Fed.
Cir. 1997) the Federal Circuit stated that "structure disclosed in the
specification is `corresponding' structure only if the specification or
prosecution history clearly links or associates that structure to the
function recited in the claim.This duty to link or associate structure
to function is the quid pro quo for the convenience of employing Section
112, Para. 6." It is important to have a clear prosecution history file
record. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,
41 USPQ2d 1865 (1997); York Prods., Inc. v. Central Tractor Farm &
Family Ctr., 99 F.3d 1568, 1575, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996)
("the record before the Patent and Trademark Office is often of critical
significance in determining the meaning of the claims"). 35 U.S.C.
112, 6 states that "[a]n element in a claim for a combination may be
expressed as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof"
(emphasis added). If the disclosure implicitly sets forth the structure,
material, or acts corresponding to a means-(or step-) plus-function
claim limitation and the examiner concludes that one skilled in the art
would recognize what structure, material, or acts perform the claimed
function, the examiner may still require applicant, pursuant to 37 CFR
1.75 (d)(1), to clarify the record by amending the written description
such that it expressly recites what structure, material, or acts perform
the claimed function. If applicant chooses not to amend the written
description to clarify the record, it is incumbent upon the examiner in
exercising his or her responsibility to see that the file history is as
complete as is reasonably possible. The examiner may do so by stating on
the record what structure, material, or acts perform the function
recited in the means-plus-function limitation. If applicant disagrees
with the examiner's statement, applicant has the obligation to clarify
the record by submitting a reply explaining the reasons why applicant
disagrees with the statement made by the examiner.
Comment 11: One comment stated that "[t]o use the convenience of
functional claim elements under Section 112(6), an applicant, therefore,
must explicitly describe and link structure within the specification
with the corresponding functional claim element." The commentor further
stated that the USPTO's reliance on the very fact specific decision of
In re Dossel, to permit applicant to implicitly set forth the structure
corresponding to a means-plus-function limitation in the written
description, is misplaced. The commentor suggested that the guidelines
be modified to state that where the written description only implicitly
or inherently sets forth the structure, material, or acts corresponding
to a means-(or step-) plus-function, the examiner must require applicant
to explicitly describe or link a structure within the specification to
the corresponding functional claim element.
Response: The comment has not been adopted. In a recent decision, Atmel
Corp. v. Information Storage Devices Inc., 198 F.3d 1374, 1379, 53
USPQ2d 1225, 1228 (Fed. Cir. 1999), the Federal Circuit stated that "the
`one skilled in the art' mode of analysis applies with equal force when
determining whether a 112 6 means-plus-function limitation is
sufficiently definite under 112 2." The court further stated that
the interim supplemental examination guidelines published by the USPTO,
which stated that the "disclosure of structure corresponding to a
means-plus-function limitation may be implicit in the written
description if it would have been clear to those skilled in the art what
structure must perform the function recited in the means-plus-function
limitation," is consistent with the court's holding in the case. In
order to make the file record clear, the examiner should, pursuant to 37
CFR 1.75(d)(1), require applicant to amend the written description to
expressly recite what structure, material, or acts perform the function
recited in the claim or the examiner could state on the record what
structure, material, or acts perform the function recited in the claim.
Comment 12: One comment was directed to the process for making a prima
facie case of equivalence of a prior art element. The commentor stated
that even though this process is not superseded by these interim
supplemental guidelines, the commentor is of the opinion that the
process is inconsistent with the Federal Circuit ruling in In re
Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994). In particular,
the guidelines state that if the examiner finds that the prior art
element performs the claimed function and is not excluded by any
explicit definition provided in the specification for an equivalent, the
examiner has met the prima facie case of equivalence. The commentor
stated that this amounts to ignoring the means disclosed in the
specification contrary to Donaldson. The commentor suggested that the
test for equivalents should be modified to require the examiner to
provide a rationale for why the prior art element is an equivalent to
the claimed means since such a rationale is necessary in order to make
out a prima facie case of equivalence.
Response: The comment has been adopted. The supplemental examination
guidelines have been modified to state that if the examiner finds that
(1) a prior art element performs the claimed function, (2) the prior art
element is not excluded by any explicit definition provided in the
specification for an equivalent, and (3) the prior art element is an
equivalent, the examiner should provide an explanation and rationale in
the Office action as to why the prior art element is an equivalent to
the claimed means. Factors that will support a conclusion that the prior
art element is an equivalent are:
(1) the prior art element performs the identical function specified in
the claim in substantially the same way, and produces substantially the
same results as the corresponding element disclosed in the
specification. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259,
1267, 51 USPQ2d 1225, 1229-30 (Fed. Cir. 1999);
(2) a person of ordinary skill in the art would have recognized the
interchangeability of the element shown in the prior art for the
corresponding element disclosed in the specification. Al-Site Corp.v.
VSI Int'l, Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir.
1999); Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., 145 F.3d
1303, 1309, 46 USPQ2d 1752, 1757 (Fed. Cir. 1998); Lockheed Aircraft
Corp. v. United States, 553 F.2d 69, 83, 193 USPQ 449, 461 (Ct. Cl.
1977);
(3) there are insubstantial differences between the prior art element
and the corresponding element disclosed in the specification. IMS Tech.,
Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54 USPQ2d 1129, 1138
(Fed. Cir. 2000); Valmont Indus. v. Reinke Mfg. Co., 983 F.2d 1039,
1043, 25 USPQ2d 1451, 1455 (Fed. Cir. 1993);
(4) the prior art element is a structural equivalent of the
corresponding element disclosed in the specification. In re Bond, 910
F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
A showing of at least one of the above-noted factors by the examiner
should be sufficient to support a conclusion that the prior art element
is an equivalent of the means-(or step-) plus-function limitation. The
examiner should then conclude that the claimed limitation is met by the
prior art element. In addition to the conclusion that the prior art
element is an equivalent, examiners should also demonstrate, where
appropriate, why it would have been obvious to one of ordinary skill in
the art at the time of the invention to substitute applicant's described
structure, material, or acts for that described in the prior art
reference. See In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972).The burden then shifts to applicant to show that the prior art
element is not an equivalent of the structure, material, or acts
disclosed in the application. See In re Mulder, 716 F.2d 1542, 1549, 219
USPQ 189, 196 (Fed. Cir. 1983). This three-step process is consistent
with the requirement that the USPTO gives claims their broadest
reasonable interpretation. See In re Donaldson Co., 16 F.3d 1189, 1194,
29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (stating that 35 U.S.C. 112,
6 "merely sets a limit on how broadly the PTO may construe
means-plus-function language under the rubric of `reasonable
interpretation'"). The USPTO believes that this three-step process for
making a prima facie case of equivalence is consistent with binding
precedent of the Federal Circuit.
Comment 13: One comment stated the USPTO does not have the authority to
alter substantive law, and thus, the USPTO must either go to the Supreme
Court or to Congress to obtain an amendment to 35 U.S.C. 112, 6.
Response: The suggestion has not been adopted. As noted in the response
to comment 12 above, the USPTO believes that these supplemental
examination guidelines are consistent with the Federal Circuit's
interpretation of 35 U.S.C. 112, 6.
I. Supplemental Examination Guidelines for Claims Subject to 35 U.S.C.
112, 6
In February 1994, the Court of Appeals for the Federal Circuit
(Federal Circuit) held in an en banc decision that "the `broadest
reasonable interpretation' that an examiner may give means-plus-function
language is that statutorily mandated in [35 U.S.C. 112, 6] . . .
[T]he PTO may not disregard the structure disclosed in the
specification corresponding to such language when rendering a
patentability determination." In re Donaldson Co., 16 F.3d 1189,
1194-95, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). In May 1994,
the United States Patent and Trademark Office (USPTO) issued guidelines
implementing changes in examination practice in response to Donaldson.
See Means or Step Plus Function Limitation Under 35 U.S.C. 112,
6; Notice, 1162 Off. Gaz. Pat. Office 59 (May 17, 1994) ("1994
Guidelines").
The 1994 Guidelines note that there is no "magic" language that
invokes 35 U.S.C. 112, 6.1 However, to establish uniformity to
the extent possible, in view of the recent case law, and to make the
prosecution record clearer, these guidelines supplement the 1994
Guidelines in assisting examiners to determine when 35 U.S.C. 112,
6 should be applied. To the extent these supplemental guidelines are
inconsistent with the 1994 Guidelines, the supplemental guidelines are
controlling.
These supplemental examination guidelines are based on the Office's
current understanding of the law and are believed to be fully consistent
with binding precedent of the Supreme Court, the Federal Circuit and the
Federal Circuit's predecessor courts. These supplemental examination
guidelines do not constitute substantive rulemaking and hence do not
have the force and effect of law.
The USPTO must apply 35 U.S.C. 112, 6 in appropriate cases,
and give claims their broadest reasonable interpretation, in light of
and consistent with the written description of the invention in the
application.2 Thus, a claim limitation will be interpreted to invoke 35
U.S.C. 112, 6 if it meets the following 3-prong analysis:
(1) the claim limitations must use the phrase "means for" or
"step for";3
(2) the "means for" or "step for" must be modified by functional
language;4 and
(3) the phrase "means for" or "step for" must not be modified by
sufficient structure, material, or acts for achieving the specified
function.5
With respect to the first prong of this analysis, a claim element
that does not include the phrase "means for" or "step for" will not be
considered to invoke 35 U.S.C. 112, 6. If an applicant wishes to
have the claim limitation treated under 35 U.S.C. 112, 6,
applicant must either (1) amend the claim to include the phrase "means
for" or "step for" in accordance with these guidelines, or (2) show that
even though the phrase "means for" or "step for" is not used, the claim
limitation is written as a function to be performed and does not recite
sufficient structure, material, or acts which would preclude application
of 35 U.S.C. 112, 6.6
Accordingly, these supplemental examination guidelines provide
applicants with the opportunity to either invoke or not invoke 35 U.S.C.
112, 6 based upon a clear and simple set of criteria.
II. Procedures for determining whether the written description
adequately describes the corresponding structure, material, or acts
necessary to support a claim limitation which invokes 35 U.S.C. 112,
6
If a claim limitation invokes 35 U.S.C. 112, 6, it must be
interpreted to cover the corresponding structure, material, or acts in
the specification and "equivalents thereof."7 If the written description
fails to set forth the supporting structure, material or acts
corresponding to the means-(or step-) plus-function, the claim may not
meet the requirement of 35 U.S.C. 112, 2:
Although [35 U.S.C. 112, 6] statutorily provides that one may
use means-plus-function language in a claim, one is still subject to the
requirement that a claim "particularly point out and distinctly claim"
the invention. Therefore, if one employs means-plus-function language in
a claim, one must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to set
forth an adequate disclosure, the applicant has in effect failed to
particularly point out and distinctly claim the invention as required by
[35 U.S.C. 112, 2].8
Whether a claim reciting an element in means-(or step-) plus-function
language fails to comply with 35 U.S.C. 112, 2 because the
specification does not disclose adequate structure (or material or acts)
for performing the recited function is closely related to the question
of whether the specification meets the description requirement in 35
U.S.C. 112, 1.9 However, 35 U.S.C. 112, 6 does not impose
any requirements in addition to those imposed by 35 U.S.C. 112,
1.10 Conversely, the invocation of 35 U.S.C. 112, 6 does not
exempt an applicant from compliance with 35 U.S.C. 112, 1 and
2.11
Under certain limited circumstances, the written description does not
have to explicitly describe the structure (or material or acts)
corresponding to a means-(or step-) plus-function limitation to
particularly point out and distinctly claim the invention as required by
35 U.S.C. 112, 2.12 Rather, disclosure of structure corresponding
to a means-plus-function limitation may be implicit in the written
description if it would have been clear to those skilled in the art what
structure must perform the function recited in the means-plus-function
limitation.13 However, the claims must still be analyzed to determine
whether there exists corresponding adequate support for such claim under
35 U.S.C. 112, 1.14
Therefore, a means-(or step-) plus-function claim limitation
satisfies 35 U.S.C. 112, 2 if: (1) the written description links
or associates particular structure, material, or acts to the function
recited in a means-(or step-) plus-function claim limitation; or (2) it
is clear based on the disclosure in the application that one skilled in
the art would have known what structure, material, or acts perform the
function recited in a means-(or step-) plus-function limitation.
37 CFR 1.75(d)(1) provides, in part, that "the terms and phrases used
in the claims must find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may be
ascertainable by reference to the description." In the situation in
which the written description only implicitly or inherently sets forth
the structure, material, or acts corresponding to a means-(or step-)
plus-function, and the examiner concludes that one skilled in the art
would recognize what structure, material, or acts perform the function
recited in a means-(or step-) plus- function, the examiner should either
(1) have the applicant clarify the record by amending the written
description such that it expressly recites what structure, material, or
acts perform the function recited in the claim element15 or (2) state on
the record what structure, material, or acts perform the function
recited in the means-(or step-) plus-function limitation.
III. Making a Prima Facie Case of 35 U.S.C. 112, 6 Equivalence
If the examiner finds that a prior art element (1) performs the
function specified in the claim, (2) is not excluded by any explicit
definition provided in the specification for an equivalent, and (3) is
an equivalent of the means-(or step-) plus-function limitation, the
examiner should provide an explanation and rationale in the Office
action as to why the prior art element is an equivalent. Factors that
will support a conclusion that the prior art element is an equivalent
are:
(1) the prior art element performs the identical function specified
in the claim in substantially the same way, and produces substantially
the same results as the corresponding element disclosed in the
specification;16
(2) a person of ordinary skill in the art would have recognized the
interchangeability of the element shown in the prior art for the
corresponding element disclosed in the specification;17
(3) there are insubstantial differences between the prior art element
and the corresponding element disclosed in the specification;18
(4) the prior art element is a structural equivalent of the
corresponding element disclosed in the specification.19
A showing of at least one of the above-noted factors by the examiner
should be sufficient to support a conclusion that the prior art element
is an equivalent. The examiner should then conclude that the claimed
limitation is met by the prior art element. In addition to the
conclusion that the prior art element is an equivalent, examiners should
also demonstrate, where appropriate, why it would have been obvious to
one of ordinary skill in the art at the time of the invention to
substitute applicant's described structure, material, or acts for that
described in the prior art reference. See In re Brown, 459 F.2d 531,
535, 173 USPQ 685, 688 (CCPA 1972).The burden then shifts to applicant
to show that the prior art element is not an equivalent of the
structure, material, or acts disclosed in the application. See In re
Mulder, 716 F.2d 1542, 1549, 219 USPQ 189, 196 (Fed. Cir. 1983).
To the extent that the three-step process for making a prima facie
case of equivalence of a prior art element during ex parte examination
set forth in these supplemental examination guidelines is inconsistent
with the 1994 Guidelines, the supplemental examination guidelines
control. The supplemental examination guidelines are consistent with the
requirement that the USPTO give claims their broadest reasonable
interpretation.20 The specification need not describe the equivalents of
the structures, material, or acts corresponding to the means-(or step-)
plus-function claim element.21 Where, however, the specification is
silent as to what constitutes equivalents and the examiner has made out
a prima facie case of equivalence, the burden is placed upon the
applicant to show that a prior art element which performs the claimed
function is not an equivalent of the structure, material, or acts
disclosed in the specification.22
Endnotes
1. See 1994 Guidelines at 59.
2. See In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1850
(Fed. Cir. 1994) (in banc) (stating that 35 U.S.C. 112, 6 "merely
sets a limit on how broadly the PTO may construe means-plus-function
language under the rubric of `reasonable interpretation'"). The Federal
Circuit has held that applicants (and reexamination patentees) before
the USPTO have the opportunity and the obligation to define their
inventions precisely during proceedings before the PTO. See In re
Morris, 127 F.3d 1048, 1056-57, 44 USPQ2d 1023, 1029-30 (Fed. Cir.
1997)(35 U.S.C. 112, 2 places the burden of precise claim
drafting on the applicant); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989)(manner of claim interpretation that is used
by courts in litigation is not the manner of claim interpretation that
is applicable during prosecution of a pending application before the
PTO); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425, 44
USPQ2d 1103, 1107 (Fed. Cir. 1997) (patentee who had a clear opportunity
to negotiate broader claims during prosecution but did not do so, may
not seek to expand the claims through the doctrine of equivalents, for
it is the patentee, not the public, who must bear the cost of its
failure to seek protection for this foreseeable alteration of its
claimed structure). Thus, applicants and reexamination patentees before
the USPTO have an opportunity and obligation to specify, consistent with
these supplemental guidelines, when a claim limitation invokes 35 U.S.C.
112, 6.
3. Cf. Seal-Flex, Inc. v. Athletic Track and Court Constr., 172 F.3d
836, 849-50, 50 USPQ2d 1225, 1233-34 (Fed. Cir. 1999) (Rader, J.,
concurring) (use of the phrase "step for" in a method claim raises a
presumption that 35 U.S.C. 112, 6 applies, whereas, use of the
word "step" by itself or the phrase "step of" does not invoke a
presumption that 35 U.S.C. 112, 6 applies); Ethicon, Inc. v.
United States Surgical Corp., 135 F.3d 1456, 1463, 45 USPQ2d 1545, 1550
(Fed. Cir. 1998), cert. denied, 525 U.S. 923 (1998) ("use of the word
`means' gives rise to `a presumption that the inventor used the term
advisedly to invoke the statutory mandates for means-plus-function
clauses'"); O.I. Corp. v. Tekmar, 115 F.3d 1576, 1583, 42 USPQ2d 1777,
1782 (Fed. Cir. 1997) (method claim that paralleled means-plus-function
apparatus claim but lacked "step for" language did not invoke 35 U.S.C.
112, 6). Thus, absent an express recitation of "means for" or
"step for" in the limitation, the broadest reasonable interpretation
will not be limited to "corresponding structure . . . and equivalents
thereof." Cf. Morris, 127 F.3d at 1055, 44 USPQ2d at 1028 ("no
comparable mandate in the patent statute that relates the claim scope of
non- 112 6 claims to particular matter found in the
specification").
4. See York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d
1568, 1574, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996) (holding that a claim
limitation containing the term "means" does not invoke 35 U.S.C. 112,
6 if the claim limitation does not link the term "means" to a
specific function).
5. See Seal-Flex, 172 F.3d at 849, 50 USPQ2d at 1234 (Rader, J.,
concurring) ("Even when a claim element uses language that generally
falls under the step-plus-function format, however, 112 6 still
does not apply when the claim limitation itself recites sufficient acts
for performing the specified function"). Cf. Rodime PLC v. Seagate
Tech., Inc., 174 F.3d 1294, 1303-04, 50 USPQ2d 1429, 1435-36 (Fed. Cir.
1999) (holding "positioning means for moving" does not invoke 35 U.S.C.
112, 6 because the claim further provides a list of the structure
underlying the means and the detailed recitation of the structure for
performing the moving function removes this element from the purview of
35 U.S.C. 112, 6); Cole v. Kimberly- Clark Corp., 102 F.3d 524,
531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996) (holding "perforation
means.for tearing" does not invoke 35 U.S.C. 112, 6 because the
claim describes the structure supporting the tearing function (i.e.,
perforation)). In other cases, the Federal Circuit has held otherwise.
See Unidynamics Corp. v. Automatic Prod. Int'l, 157 F.3d 1311, 1319, 48
USPQ2d 1099, 1104 (Fed. Cir. 1998) (holding "spring means" does invoke
35 U.S.C. 112, 6). During examination, however, applicants have
the opportunity and the obligation to define their inventions precisely,
including whether a claim limitation invokes 35 U.S.C. 112, 6.
Thus, if the phrase "means for" or "step for" is modified by sufficient
structure, material, or acts for achieving the specified function, the
USPTO will not apply 35 U.S.C. 112, 6 until such modifying
language is deleted from the claim limitation. See also supra note 1.
6. While traditional "means for" or "step for" language does not
automatically make an element a means-(or step-) plus-function element,
conversely, lack of such language does not necessarily prevent a
limitation from being construed as a means-(or step-) plus-function
limitation. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352,
1356-57, 50 USPQ2d 1372, 1374-75 (Fed. Cir. 1999) ("ink delivery means
positioned on." invokes 35 U.S.C. 112, 6 since the phrase "ink
delivery means" is equivalent to "means for ink delivery"); Al-Site
Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1317-19, 50 USPQ2d 1161,
1166-67 (Fed. Cir. 1999) (although the claim elements "eyeglass hanger
member" and "eyeglass contacting member" include a function, these claim
elements do not invoke 35 U.S.C. 112, 6 because the claims
themselves contain sufficient structural limitations for performing
those functions); Seal-Flex, 172 F.3d at 849, 50 USPQ2d at 1234 (Rader,
J., concurring) ("claim elements without express step-plus- function
language may nevertheless fall within 112 6 if they merely claim
the underlying function without recitation of acts for performing that
function . . . In general terms, the `underlying function' of a method
claim element corresponds to what that element ultimately accomplishes
in relationship to what the other elements of the claim and the claim as
a whole accomplish. `Acts,' on the other hand, correspond to how the
function is accomplished.); Personalized Media Communications LLC v.
ITC, 161 F.3d 696, 703-04, 48 USPQ2d 1880, 1886-87 (Fed. Cir. 1998);
Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1213, 48 USPQ2d 1010,
1016 (Fed. Cir. 1998) ("lever moving element for moving the lever" and
"movable link member for holding the lever.and for releasing the lever"
were construed as means-plus-function limitations invoking 35 U.S.C.
112, 6 since the claimed limitations were described in terms of
their function, not their mechanical structure).
7. See 35 U.S.C. 112, 6. See also B. Braun Medical, Inc. v.
Abbott Lab., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1899 (Fed. Cir. 1997).
8. See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; see also B. Braun
Medical, 124 F.3d at 1425, 43 USPQ2d at 1900; and In re Dossel, 115 F.3d
942, 946, 42 USPQ2d 1881, 1884-85 (Fed. Cir. 1997).
9. See In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA 1976)
(unless the means-plus-function language is itself unclear, a claim
limitation written in means-plus-function language meets the
definiteness requirement in 35 U.S.C. 112, 2 so long as the
specification meets the written description requirement in 35 U.S.C.
112, 1).
10. See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492-93 (CCPA
1973).
11. See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; Knowlton, 481
F.2d at 1366, 178 USPQ at 493.
12. See Dossel, 115 F.3d at 946, 42 USPQ2d at 1885. Under proper
circumstances, drawings may provide a written description of an
invention as required by 35 U.S.C. 112. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir. 1991).
13. See Atmel Corp. v. Information Storage Devices Inc., 198 F.3d 1374,
1379, 53 USPQ2d 1225, 1228 (Fed. Cir. 1999) (stating that the "one
skilled in the art" analysis should apply in determining whether
sufficient structure has been disclosed to support a means-plus-function
limitation and that the USPTO's recently issued proposed Supplemental
Guidelines are consistent with the court's holding on this point);
Dossel, 115 F.3d at 946-47, 42 USPQ2d at 1885 ("Clearly, a unit which
receives digital data, performs complex mathematical computations and
outputs the results to a display must be implemented by or on a general
or special purpose computer (although it is not clear why the written
description does not simply state `computer' or some equivalent
phrase.)").
14. In considering whether there is 35 U.S.C. 112, 1 support for
the claim limitation, the examiner must consider not only the original
disclosure contained in the summary and detailed description of the
invention portions of the specification, but also the original claims,
abstract, and drawings. See In re Mott, 539 F.2d 1291, 1299, 190 USPQ
536, 542-43 (CCPA 1976) (claims); In re Anderson, 471 F.2d 1237, 1240,
176 USPQ 331, 333 (CCPA 1973) (claims); Hill-Rom Co. v. Kinetic
Concepts, Inc., 54 USPQ2d 1437 (Fed. Cir. 2000) (abstract); In re
Armbruster, 512 F.2d 676, 678-79, 185 USPQ 152, 153-54 (CCPA 1975)
(abstract); Anderson, 471 F.2d at 1240, 176 USPQ at 333 (abstract);
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117
(Fed. Cir. 1991) (drawings); In re Wolfensperger, 302 F.2d 950, 955-57,
133 USPQ 537, 541-43 (CCPA 1962) (drawings).
15. Even if the disclosure implicitly sets forth the structure,
material, or acts corresponding to a means-(or step-) plus-function
claim element in compliance with 35 U.S.C. 112, 1 and 2, the
USPTO may still require the applicant to amend the specification
pursuant to 37 CFR 1.75(d) and MPEP 608.01(o) to explicitly state, with
reference to the terms and phrases of the claim element, what structure,
material, or acts perform the function recited in the claim element. See
35 U.S.C. 112, 6 ("An element in a claim for a combination may be
expressed as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof."
(emphasis added)); see also B. Braun Medical, 124 F.3d at 1424, 43
USPQ2d at 1900 (holding that "pursuant to this provision [35 U.S.C.
112, 6], structure disclosed in the specification is `corresponding'
structure only if the specification or prosecution history clearly links
or associates that structure to the function recited in the claim. This
duty to link or associate structure to function is the quid pro quo for
the convenience of employing 112, paragraph 6."); Wolfensperger, 302
F.2d at 955, 133 USPQ at 542 (just because the disclosure provides
support for a claim element does not mean that the USPTO cannot enforce
its requirement that the terms and phrases used in the claims find clear
support or antecedent basis in the written description).
16. Kemco Sales, Inc. v. Control Papers Co., 54 USPQ2d 1308, 1315 (Fed.
Cir. 2000); Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267,
51 USPQ2d 1225, 1229-30 (Fed. Cir. 1999).
17. Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1316, 50 USPQ2d
1161, 1165 (Fed. Cir. 1999); Chiuminatta Concrete Concepts, Inc. v.
Cardinal Indus., Inc., 145 F.3d 1303, 1309, 46 USPQ2d 1752, 1757 (Fed.
Cir. 1998); Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 83,
193 USPQ 449, 461 (Ct. Cl. 1977).
18. IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436,
54 USPQ2d 1129, 1138 (Fed. Cir. 2000); Valmont Indus. v. Reinke Mfg.
Co., 983 F.2d 1039, 1043, 25 USPQ2d 1451, 1455 (Fed. Cir. 1993).
19. In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
20. See Donaldson, 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35
U.S.C. 112, 6 "merely sets a limit on how broadly the USPTO may
construe means-plus-function language under the rubric of `reasonable
interpretation'").
21. See Noll, 545 F.2d at 149-50, 191 USPQ at 727 (the meaning of
equivalents is well understood in patent law, and an applicant need not
describe in his specification the full range of equivalents of his
invention) (citation omitted). Cf. Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986)
("a patent need not teach, and preferably omits, what is well known in
the art").
22. See 1994 Guidelines at 60; see also In re Mulder, 716 F.2d 1542,
1549, 219 USPQ 189, 196 (Fed. Cir. 1983).
June 15, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office