| Examination Instructions and Guidelines |
Referenced Items (251, 252, 253, 254, 255, 256, 257, 258, 259, 260, 261, 262) |
(254) 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.
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 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 (§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
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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
(§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 guidelins 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 §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 §112, ¶2. Conversely, a claim
that does not comply with this requirement of §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 §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.
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These guidelines set forth the examining procedure for making such
determinations and focus on several key aspects of examining claims
under §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 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 §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 §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
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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 §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 §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 §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, §112, ¶6, expressly authorizes a form of functional claiming
(means-plus-function claim limitations discussed in III.C. below).
Functional language may also be employed to limit the claims without
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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 §112, ¶1.25 For
instance, a single means claim covering every conceivable means for
achieving the stated result was held to be invalid under §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 §112, ¶1, see MPEP §§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
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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 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
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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 §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 §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
§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 §112, ¶2 as indefinite if appropriate.
Depending upon the circumstances of an application, it may be
appropriate to reject a Markush claim under §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 §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 §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
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requirements of §112, ¶4, the examiner should reject the dependent
claim under §112, ¶4 as unpatentable rather than objecting to the
claim.54 Although the requirements of §112, ¶4 are related to matters of
form, non-compliance with §112, ¶4 renders the claim unpatentable just as
non-compliance with other paragraphs of §112 would.55 For example, a
dependent claim must be rejected under §112, ¶4 if it omits an element
from the claim upon which it depends56 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 §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 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 §112, ¶6
1. Determining Whether a Claim Limitation Invokes §112, ¶6: If a claim
limitation recites a term and associated functional language, the examiner
should determine whether the claim limitation invokes §112, ¶6. The claim
limitation is presumed to invoke §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 §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
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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, §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 §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 §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
§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 §112, ¶6. The following are examples of
structural terms that have been found not to invoke §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 §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 §112, ¶6
when coupled with a function, it will not invoke §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 §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 §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 §2181, which will
be revised in due course.
When it is unclear whether a claim limitation invokes §112, ¶6 or not, a
rejection under §112, ¶2 may be appropriate.84 Similarly, when applicant
uses the phrase "means for" or "step for" in the preamble, a rejection
under §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 §112, ¶2 When Examining Means-Plus-Function
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Limitations Under §112, ¶6: Once the examiner determines that a claim
limitation is a means-plus-function limitation invoking §112, ¶6, the
examiner should determine the claimed function85 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 §112, ¶2, the written description must clearly link or associate
the corresponding structure, material, or acts to the claimed function.88
A rejection under §112, ¶2 is appropriate if the written description
fails to link or associate the disclosed structure, material, or acts
to the claimed function, or if there is no disclosure (or insufficient
disclosure) of structure, material, or acts for performing the claimed
function.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 §112, ¶2 may be appropriate in the following
situations when examining means-plus-function claim limitations under §112,
¶6: (1) When it is unclear whether a claim limitation invokes §112, ¶6; (2)
when §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 §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
§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 §112, ¶2 should be made.93
If the written description sets forth the corresponding structure,
material, or acts in compliance with §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
§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 §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 §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
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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 §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 §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 §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
§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.
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
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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 §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 §2173.05 provides numerous examples of rationales that may support
a rejection under §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 §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 §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 §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 §2173.02. If the
language used by applicant satisfies the statutory requirement of §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 §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 §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 §112, ¶2, with or without the submission of an amendment, and the
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examiner considers applicant's arguments to be persuasive, the examiner
should indicate in the next Office communication that the previous
rejection under §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 §112, ¶2, as well as a rejection(s) in view
of the prior art under §102 or §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,
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 §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 §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 §112, ¶6, (and if it does, the identification of
corresponding structure in the specification for a §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
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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 §112, ¶6 Is Invoked: The examiner
should specify in the Office action that a claim limitation has been
interpreted under the provisions of §112, ¶6, as provided above in section
III.C. When claim terms other than "means for" or "step for" are determined
to invoke §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 §112, ¶6. When the
examiner has determined that §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 §112, ¶6, the examiner
should indicate that the claim was interpreted under the provisions of
§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 eligibility135
and utility136 requirements under §101, the definiteness requirement
of §112, ¶2, the three separate and distinct requirements of §112, ¶1,137
the novelty requirement of §102, and nonobviousness requirement of
§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 §112, ¶6.
I. Determining Whether There Is Adequate Written Description for a
Computer-Implemented Functional Claim Limitation: The first paragraph
of §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 §112, ¶1 applies to all claims
including original claims that are part of the disclosure as filed.142
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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:
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
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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 §112, ¶1 for lack of written description must be made.
For more information regarding the written description requirement, see
MPEP §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 §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
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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 §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 regarding the enablement requirement, see
MPEP §§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 §§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 §102 or 103 may be appropriate.169 See MPEP
§§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 §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
§2141 and Examination Guidelines Update: Developments in the
Obviousness Inquiry after KSR v. Teleflex, 75 FR 53643 (Sept. 1, 2010).
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
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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, §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 §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
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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.
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 §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 §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 §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 §112, ¶4).
58 See, e.g., Bancorp Servs., L.L.C. v. Hartford Life Ins.
Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004).
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59 Id.
60 See MPEP §§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 §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 §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
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
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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 §704.11(a) (Example R).
93 For more information, see MPEP §704.12 ("Replies to
requirements for information must be complete and filed within the
time period set including any extensions. Failure to reply within
the time period set will result in the abandonment of the
application.")
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 §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.").
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)
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(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 §1302.14(I).
113 See MPEP §707.07(f).
114 See MPEP §706.03, 707.07(g).
115 See MPEP §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 §2173.05(a)(I).
119 See MPEP §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 §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 §2173.02.
125 See MPEP §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 §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 §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
§1302.14(I).
131 Id.
132 Id.
133 See MPEP §1302.14(II)(G).
134 See MPEP §1302.14(I).
135 For determining whether claimed subject matter complies
with the subject matter eligibility requirement of §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
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with the utility requirement of §101, examiners should consult
the "Guidelines for Examination of Applications for Compliance with
the Utility Requirement" set forth in MPEP §2107.
137 For determining whether claimed subject matter complies
with the written description requirement of §112, ¶1, examiners
should consult the "Computer Programming and 35 U.S.C. §112,
First Paragraph, Guidelines" set forth in MPEP §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 §2163, and for determining whether claimed
subject matter complies with the enablement requirement of §112, ¶1,
examiners should consult the enablement guidelines set
forth in MPEP §2164 et seq., including the "Examples of
Enablement Issues-Computer Programming Cases" set forth in MPEP
§2164.06(c) and "Enablement Commensurate in Scope With the
Claims" set forth in MPEP §2164.08.
138 For determining whether the claims comply with the
nonobviousness requirement of §103, examiners should use
"Examination Guidelines for Determining Obviousness Under 35 U.S.C.
103" set forth in MPEP §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 §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
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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 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
§2144.04.
174 KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007);
see also MPEP §2143, Exemplary Rationales D and F.
175 Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326-27
(Fed. Cir. 2008).
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