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(265) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2018-0059]
Examining Computer-Implemented Functional Claim Limitations for
Compliance With 35 U.S.C. 112
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Examination guidance; request for comments.
SUMMARY: This guidance will assist United States Patent and Trademark
Office (USPTO) personnel in the examination of claims in patent
applications that contain functional language, particularly patent
applications where functional language is used to claim computer-
implemented inventions. Part I of this guidance addresses issues
related to the examination of computer-implemented functional claims
having means-plus-function limitations. Part II of this guidance
addresses written description and enablement issues related to the
examination of computer-implemented functional claims that recite only the
idea of a solution or outcome to a problem but fail to recite details of
how the solution or outcome is accomplished.
DATES:
Applicable Date: The Computer-Implemented Functional Claim Limitations
Guidance is effective on January 7, 2019. The Computer-Implemented
Functional Claim Limitations Guidance applies to all applications, and to
all patents resulting from applications, filed before, on or after
January 7, 2019.
Comment Deadline Date: Written comments must be received on or before
March 8, 2019.
ADDRESSES: Comments must be sent by electronic mail message over the
internet addressed to: 112Guidance2019@uspto.gov.
Electronic comments submitted in plain text are preferred, but also may
be submitted in ADOBE® portable document format or MICROSOFT WORD® format.
Comments not submitted electronically should be submitted on paper in a
format that facilitates convenient digital scanning into ADOBE® portable
document format. The comments will be available for viewing via the USPTO's
internet website (http://www.uspto.gov). Because comments will be made
available for public inspection, information that the submitter does not
desire to make public, such as an address or phone number, should not be
included in the comments.
FOR FURTHER INFORMATION CONTACT: Nicole D. Haines, Senior Legal Advisor, at
571-272-7717 or Jeffrey R. West, Senior Legal Advisor, at 571-272-2226,
both with the Office of Patent Legal Administration.
SUPPLEMENTARY INFORMATION: The patent examination process must ensure
that: (1) The claims of an application have proper written description
and enablement support under 35 U.S.C. 112(a) ¹ in the disclosure of the
application, and (2) functional limitations (i.e., claim limitations that
define an element in terms of the function it performs without reciting the
structure, materials, or acts that perform the function) are properly
treated as means (or step) plus function limitations under 35 U.S.C.
112(f), and are sufficiently definite under 35 U.S.C. 112(b), as
appropriate. These requirements are particularly relevant to computer-
implemented functional claims.
¹ Section 4 of the Leahy-Smith America Invents Act (AIA) designated
pre-AIA 35 U.S.C. 112, ¶¶ 1 through 6, as 35 U.S.C. 112(a) through (f),
effective as to applications filed on or after September 16, 2012. See
Public Law 112-29, 4(c), 125 Stat. 284, 296 (2011). AIA 35 U.S.C. 112(a)
and pre-AIA 35 U.S.C. 112, ¶ 1 are collectively referred to in this notice
as 35 U.S.C. 112(a); AIA 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, ¶ 2
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are collectively referred to in this notice as 35 U.S.C. 112(b); and AIA
35 U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, ¶ 6 are collectively referred
to in this notice as 35 U.S.C. 112(f).
The U.S. Court of Appeals for the Federal Circuit ("Federal Circuit")
has recognized a problem with broad functional claiming without adequate
structural support in the specification. Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (overruling the Federal
Circuit's previous application of a "strong" presumption that claim
limitations lacking the word "means" are not subject to § 112(f) to
address the resulting "proliferation of functional claiming untethered to
[§ 112(f)] and free of the strictures set forth in the statute");
Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013)
(" 'Section [112(f)] is intended to prevent . . . pure functional
claiming.' " (citing Aristocrat Techs. Australia Pty Ltd. v. Int'l Game
Tech., 521 F.3d 1238, 1333 (Fed. Cir. 2008))); Ariad Pharm., Inc. v. Eli
Lilly and Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc) (discussing
the problem of functional claims defining a genus that "simply claim a
desired result . . . without describing species that achieve that result").
In the context of another statutory requirement, 35 U.S.C. 101, the Federal
Circuit has also criticized improper functional claiming. Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (observing that
"the claims do not go beyond requiring the collection, analysis, and
display of available information in a particular field, stating those
functions in general terms, without limiting them to technical means for
performing the functions that are arguably an advance over conventional
computer and network technology"); see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1327 (Fed. Cir. 2016) (Mayer, J.,
concurring) (stating, "[s]oftware patents typically . . . describe, in
intentionally vague and broad language, a particular goal or objective [of
the software]"). Problems with functional claiming, i.e., when a claim is
purely functional in nature rather than reciting with any specificity how
the claimed function is achieved, can be effectively addressed using long-
standing, well-understood principles under 35 U.S.C. 112. Thus, the USPTO
is providing further guidance on the application of 35 U.S.C. 112
requirements during examination.
Part I of this guidance focuses on claim interpretation under 35 U.S.C.
112(f) and compliance with the definiteness requirement of 35 U.S.C.
112(b), for example as discussed in the Federal Circuit decisions in
Williamson, 792 F.3d 1339, and Aristocrat, 521 F.3d 1328. Part II of this
guidance focuses on the requirements of 35 U.S.C. 112(a) relative to
written description and enablement, for example as discussed in the Federal
Circuit decision in Vasudevan Software, Inc. v. MicroStrategy, Inc.,
782 F.3d 671 (Fed. Cir. 2015).²
² As is existing practice, examiners may also issue "Requirements for
Information" pursuant to 37 CFR 1.105. This notice does not affect current
practice regarding "Requirements for Information," which remains a tool
examiners can use to help resolve, among other things, issues regarding
compliance with § 112 during examination. See, e.g., MPEP 704.10-14. For
example, an examiner may request information about written description
support, continuation in part support, issues related to § 112(f), or
enablement issues, among other things. See, e.g., MPEP 704.11(a)(K), (R),
(S)(2)-(3).
I. Review of Issues under 35 U.S.C. 112(f) and 112(b) Related to
Examination of Computer-Implemented Functional Claim Limitations: In its en
banc decision in the Williamson case, the Federal Circuit recognized that
some of its prior opinions established a heightened bar to overcoming the
presumption that a limitation expressed in functional language without
using the word "means" is not subject to 35 U.S.C. 112(f) and concluded
that such a heightened burden is unjustified. Williamson, 792 F.3d at 1349
(explaining that characterizing the presumption as strong "has shifted the
balance struck by Congress in passing [35 U.S.C. 112(f)] and has resulted
in a proliferation of functional claiming untethered to [§ 112(f)] and
free of the strictures set forth in the statute"). Instead, [t]he standard
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is whether the words of the claim are understood by personsof ordinary
skill in the art to have a sufficiently definite meaning as the name for
structure. When a claim term lacks the word "means," the presumption [that
35 U.S.C. 112(f) does not apply] can be overcome and [§ 112(f)] will apply
if the challenger demonstrates that the claim term fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function. The converse presumption
remains unaffected: use of the word "means" creates a presumption that
§ 112[f] applies.
Id. (internal citations and quotation marks omitted).
A. Claim Interpretation: One of the first steps in examining claims is
determining the broadest reasonable interpretation (BRI) of the claim. In
determining the BRI, examiners should establish the meaning of each claim
term consistent with the specification as it would be interpreted by one of
ordinary skill in the art, including identifying and construing functional
claim limitations. If a claim limitation recites a term and associated
functional language, the examiner should determine whether the claim
limitation invokes 35 U.S.C. 112(f). Application of 35 U.S.C. 112(f) is
driven by the claim language, not by applicant's intent or mere statements
to the contrary included in the specification or made during prosecution.
Examiners will apply 35 U.S.C. 112(f) to a claim limitation if it meets the
3-prong analysis set forth in the Manual of Patent Examining Procedure (9th
ed. Rev. 08.2017, Jan. 2018) (referred to herein as "MPEP"), § 2181,
subsection I. At a high level, the 3-prong analysis includes evaluating
whether: The claim limitation uses the term "means" (or "step") or a
generic placeholder, the term is modified by functional language, and the
term is not modified by sufficient structure, material or acts for
performing the function.³
³ The full text reads as follows: "[E]xaminers will apply 35 U.S.C.
112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph to a claim limitation if
it meets the following 3-prong analysis: (A) the claim limitation uses the
term 'means' or 'step' or a term used as a substitute for 'means' that is a
generic placeholder (also called a nonce term or a non-structural term
having no specific structural meaning) for performing the claimed function;
(B) the term 'means' or 'step' or the generic placeholder is modified by
functional language, typically, but not always linked by the transition
word 'for' (e.g., 'means for') or another linking word or phrase, such as
'configured to' or 'so that'; and (C) the term 'means' or 'step' or the
generic placeholder is not modified by sufficient structure, material, or
acts for performing the claimed function." MPEP 2181, subsection I.
A claim limitation is presumed to invoke 35 U.S.C. 112(f) when it
explicitly uses the term "means" and includes functional language. The
presumption that 35 U.S.C. 112(f) applies is overcome when the limitation
further includes the structure necessary to perform the recited function.
See MPEP § 2181, subsection I. By contrast, a claim limitation that does
not use the term "means" will trigger the presumption that 35 U.S.C. 112(f)
does not apply. Even in the face of this presumption, the examiner should
nonetheless consider whether the presumption is overcome.
The USPTO's examination practice regarding the presumption that
35 U.S.C. 112(f) does not apply to a claim limitation that does not use the
term "means" is based on the Federal Circuit's standard set forth in
Williamson. The presumption that 35 U.S.C. 112(f) does not apply is
overcome when "the claim term fails to 'recite sufficiently definite
structure' or else recites 'function without reciting sufficient structure
for performing that function.'" MPEP § 2181, subsection I (quoting
Williamson, 792 F.3d at 1348). Instead of using "means" in such cases, a
substitute term can act as a generic placeholder for the term "means" where
that term would not be recognized by one of ordinary skill in the art as
being sufficiently definite structure for performing the claimed function.
The following are examples of non-structural generic placeholders that may
invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for,"
"unit for," "component for," "element for," "member for," "apparatus for,"
"machine for," or "system for." See, e.g., MPEP § 2181, subsection I.A;
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Welker Bearing Co., v. Ph.D., Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008);
Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir.
2006); Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d
696, 704 (Fed. Cir. 1998); Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d
1206, 1214-15 (Fed. Cir. 1998). This list is not exhaustive, and similar
generic placeholders may invoke 35 U.S.C. 112(f). Note that there is no
fixed list of generic placeholders that always result in 35 U.S.C. 112(f)
interpretation, and likewise there is no fixed list of words that always
avoid 35 U.S.C. 112(f) interpretation. Every case will turn on its own
unique set of facts.
Even when a claim limitation uses the term "means" or a generic
placeholder for the term "means," a limitation will not invoke 35 U.S.C.
112(f) if there is a structural modifier that further describes the term
"means" or the generic placeholder. Compare Greenberg v. Ethicon Endo-
Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (concluding that the
term "detent mechanism" did not invoke pre-AIA 35 U.S.C. 112, sixth
paragraph because the modifier "detent" denotes a type of structural device
with a generally understood meaning in the mechanical arts), with Mass.
Inst. of Tech., 462 F.3d at 1354 (concluding that the term "colorant
selection mechanism" did invoke pre-AIA 35 U.S.C. 112, sixth paragraph
because the modifier "colorant selection" does not connote sufficient
structure to a person of ordinary skill in the art). 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. See MPEP § 2181,
subsection I, for more guidance on generic placeholders.
At issue in Williamson was whether a "distributed learning control
module" limitation in claims directed to a distributed learning system
should be interpreted as a means-plus-function limitation. See Williamson,
792 F.3d at 1347. The Federal Circuit concluded that "the 'distributed
learning control module' limitation fails to recite sufficiently definite
structure and that the presumption against means-plus-function claiming is
rebutted." Id. at 1351. In support, the Federal Circuit determined that:
"the word 'module' does not provide any indication of structure because it
sets forth the same black box recitation of structure for providing the
same specified function as if the term 'means' had been used"; "[t]he
prefix 'distributed learning control' does not impart structure into the
term 'module' "; and "the written description fails to impart any
structural significance to the term." Id. at 1350-51.
In view of Williamson, examiners should apply the applicable presumption
and the 3-prong analysis to interpret a computer-implemented functional
claim limitation in accordance with 35 U.S.C. 112(f) as appropriate,
including determining if the claim sets forth sufficient structure for
performing the recited function. A determination that a claim is being
interpreted according to 35 U.S.C. 112(f) should be expressly stated in the
examiner's Office action. In response to the Office action, if applicant
does not want to have the claim limitation interpreted under 35 U.S.C.
112(f), applicant may: (1) Present a sufficient showing to establish that
the claim limitation recites sufficient structure to perform the claimed
function so as to avoid interpretation under 35 U.S.C. 112(f); or (2) amend
the claim limitation in a way that avoids interpretation under 35 U.S.C.
112(f) (e.g., by reciting sufficient structure to perform the claimed
function).
The BRI of a claim limitation that is subject to 35 U.S.C. 112(f), "is
the structure, material or act described in the specification as performing
the entire claimed function and equivalents to the disclosed structure,
material or act." MPEP § 2181. Thus, if the claim limitation is being
interpreted under 35 U.S.C. 112(f), the specification must be consulted to
determine the corresponding structure, material, or act for performing the
claimed function. See MPEP § 2181, subsection I, for more guidance on
interpreting claim limitations that are subject to 35 U.S.C. 112(f).
Generally, the BRI given to a claim term that is not subject to 35 U.S.C.
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112(f) is its plain meaning unless limited by a special definition or
disavowal of claim scope set forth in the specification which must be clear
and unmistakable (note that changing the plain meaning of a claim term by
setting forth a special definition or disavowal of claim scope is
uncommon). MPEP § 2111.01, subsections I, IV. The plain meaning is the
ordinary and customary meaning given to the term by those of ordinary skill
in the art at the time of the effective filing date, evidenced by, for
example, the words of the claims themselves, the specification, drawings,
and prior art. Id. See, MPEP 2111, et. seq., for detailed guidance on the
application of the BRI during examination.
B. Indefiniteness under 35 U.S.C. 112(b): For a computer-implemented
35 U.S.C. 112(f) claim limitation, the specification must disclose an
algorithm for performing the claimed specific computer function, or else
the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). In cases "involving a
special purpose computer-implemented means-plus-function limitation, '[the
Federal Circuit] has consistently required that the structure disclosed in
the specification be more than simply a general purpose computer or
microprocessor' and that the specification must disclose an algorithm for
performing the claimed function." Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1312 (Fed. Cir. 2012) (quoting Aristocrat, 521 F.3d at 1333). Thus,
the corresponding structure for performing the specific computer function
is not simply a general purpose computer by itself but a special purpose
computer as programmed to perform the disclosed algorithm. In re Aoyama,
656 F.3d 1293, 1297 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a
computer programmed to carry out an algorithm, 'the disclosed structure is
not the general purpose computer, but rather that special purpose computer
programmed to perform the disclosed algorithm.' " (quoting WMS Gaming, Inc.
v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999))). An algorithm
is defined, for example, as "a finite sequence of steps for solving a
logical or mathematical problem or performing a task." Microsoft Computer
Dictionary (5th ed., 2002). Applicant may "express that algorithm in any
understandable terms including as a mathematical formula, in prose, or as a
flow chart, or in any other manner that provides sufficient structure."
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)
(internal citation omitted).
Special purpose computer-implemented 35 U.S.C. 112(f) claim limitations
will be indefinite under 35 U.S.C. 112(b) when the specification fails to
disclose an algorithm to perform the claimed function. For example, in
Advanced Ground Information Systems, Inc. v. Life360, Inc., 830 F.3d 1341
(Fed. Cir. 2016), the Federal Circuit determined that the term "symbol
generator" is a computer-implemented means-plus-function limitation and
that "[t]he specifications of the patents-in-suit do not disclose an
operative algorithm for the claim elements reciting 'symbol generator.' "
Id. at 1348-49. The Federal Circuit upheld the district court's
determination that the term "symbol generator" is indefinite, observing
that "although the district court recognized that the specification
describes, in general terms, that symbols are generated based on the
latitude and longitude of the participants, it nonetheless determined that
the specification fails to disclose an algorithm or description as to how
those symbols are actually generated." Id. at 1349 (internal quotation
marks and alterations omitted). See also, Blackboard, Inc. v. Desire2Learn,
Inc., 574 F.3d 1371, 1382-83 (Fed. Cir. 2009) (concluding that the
description of a server computer's "access control manager" software
feature was insufficient disclosure of corresponding structure to support
the computer-implemented "means for assigning" limitation because "what the
patent calls the 'access control manager' is simply an abstraction that
describes the function of controlling access to course materials . . .
[b]ut how it does so is left undisclosed."); Aristocrat, 521 F.3d at
1334-35 (explaining that "the [patent's] description of the embodiments is
simply a description of the outcome of the claimed functions, not a
description of the structure, i.e., the computer programmed to execute a
particular algorithm").
Moreover, the requirement for the disclosure of an algorithm cannot be
avoided by arguing that one of ordinary skill in the art is capable of
writing software to convert a general purpose computer to a special purpose
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computer to perform the claimed function. See EON Corp. IP Holdings LLC v.
AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (disagreeing "that a
microprocessor can serve as sufficient structure for a software function if
a person of ordinary skill in the art could implement the software
function[,]" noting that "we have repeatedly and unequivocally rejected
this argument: a person of ordinary skill in the art plays no role
whatsoever in determining whether an algorithm must be disclosed as
structure for a functional claim element"); Blackboard, 574 F.3d at 1385
(explaining that "[t]he fact that an ordinarily skilled artisan might be
able to design a program to create an access control list based on the
system users' predetermined roles goes to enablement[,]" whereas "[t]he
question before us is whether the specification contains a sufficiently
precise description of the 'corresponding structure' to satisfy [pre-AIA]
section 112, paragraph 6, not whether a person of skill in the art could
devise some means to carry out the recited function").
Special purpose computer-implemented 35 U.S.C. 112(f) claim limitations
are also indefinite under 35 U.S.C. 112(b) when the specification discloses
an algorithm but the algorithm is not sufficient to perform the entire
claimed function(s). See Noah, 675 F.3d at 1319 (holding that "[c]omputer-
implemented means-plus-function claims are indefinite unless the
specification discloses an algorithm to perform the function associated
with the limitation[,]" and that "[w]hen the specification discloses an
algorithm that only accomplishes one of multiple identifiable functions
performed by a means-plus-function limitation, the specification is treated
as if it disclosed no algorithm."). The sufficiency of the algorithm is
determined in view of what one of ordinary skill in the art would
understand as sufficient to define the structure and make the boundaries of
the claim understandable. For example, in Williamson, the Federal Circuit
found that the term "distributed learning control module" is a means-plus-
function limitation that performs three specialized functions (i.e.,
"receiving,", "relaying," and "coordinating"), which "must be implemented
in a special purpose computer." Williamson, 792 F.3d at 1351-52. The
Federal Circuit explained that "[w]here there are multiple claimed
functions, as we have here, the [specification] must disclose adequate
corresponding structure to perform all of the claimed functions." Id. Yet
the Federal Circuit determined that the specification "fails to disclose
any structure corresponding to the 'coordinating' function." Id. at 1354.
Specifically, the Federal Circuit found no "disclosure of an algorithm
corresponding to the claimed 'coordinating' function," concluding that the
figures in the specification relied upon by patentee as disclosing the
required algorithm, instead describe "a presenter display interface" and
not an algorithm corresponding to the claimed "coordinating" function. Id.
at 1353-54. Accordingly, the Federal Circuit affirmed the district court's
judgment that claims containing the "distributed learning control module"
limitation are invalid for indefiniteness under 35 U.S.C. 112(b). Id. at
1354.
Similarly, in Media Rights Technologies, Inc. v. Capital One Financial
Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015), the Federal Circuit determined
that the term "compliance mechanism" is a means-plus-function limitation
that performs four computer-implemented functions (i.e., "controlling data
output by diverting a data pathway; monitoring the controlled data pathway;
managing an output path by diverting a data pathway; and stopping the play
of media content"). The Federal Circuit determined "that the specification
fails to adequately disclose the structure to perform all four of [the
'compliance mechanism's'] functions" and affirmed the district court's
decision that the "compliance mechanism" limitation is indefinite. Id. at
1375. Specifically, the Federal Circuit found that "the specification fails
to disclose an operative algorithm for both the 'controlling data output'
and 'managing output path' functions[,]" which "both require diverting a
data pathway[,]" because the recited C++ source code in the specification
"only returns various error messages" and "does not, accordingly, explain
how to perform the diverting function[.]" Id. at 1374-75. "Additionally,
the specification does not disclose sufficient structure for the
'monitoring' function[,]" because the disclosed "set of rules . . . which
the 'copyright compliance mechanism' applies to monitor the data pathway to
ensure there is no unauthorized recording of electronic media . . .
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provides no detail about the rules themselves or how the 'copyright
compliance mechanism' determines whether the rules are being enforced." Id.
at 1375. See MPEP § 2181, subsection II(B), for additional guidance on
evaluating description necessary to support computer-implemented 35 U.S.C.
112(f) claim limitations.
A computer-implemented functional claim may also be indefinite when the
3-prong analysis for determining whether the claim limitation should be
interpreted under 35 U.S.C. 112(f) is inconclusive because of ambiguous
words in the claim. After taking into consideration the language in the
claims, the specification, and how those of ordinary skill in the art would
understand the language in the claims in light of the disclosure, the
examiner should make a determination regarding whether the words in the
claim recite sufficiently definite structure that performs the claimed
function. If the applicant disagrees with the examiner's interpretation of
the claim limitation, the applicant has the opportunity during the
application process to present arguments, and amend the claim if needed, to
clarify whether § 112(f) applies.
When a claim containing a computer-implemented 35 U.S.C. 112(f) claim
limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to
disclose sufficient corresponding structure (e.g., the computer and the
algorithm) in the specification that performs the entire claimed function,
it will also lack written description under 35 U.S.C. 112(a). See MPEP
§ 2163.03, subsection VI. Examiners should further consider whether the
disclosure contains sufficient information regarding the subject matter of
the claims as to enable one skilled in the pertinent art to make and use
the full scope of the claimed invention in compliance with the enablement
requirement of 35 U.S.C. 112(a). See MPEP § 2161.01, subsection III and
MPEP § 2164.08.
II. Review of Issues under 35 U.S.C. 112(a) Related to Examination of
Computer-Implemented Functional Claim Limitations: Even if a claim is not
construed as a means-plus-function limitation under 35 U.S.C. 112(f),
computer-implemented functional claim language must still be evaluated for
sufficient disclosure under the written description and enablement
requirements of 35 U.S.C. 112(a). As explained in further detail below, a
specification must describe the claimed invention in sufficient detail
(e.g., by disclosure of an algorithm) to establish that the applicant had
possession of the claimed invention as of the application filing date.
Additionally, any analysis of whether a particular claim is supported by
the disclosure in an application requires a determination of whether that
disclosure, when filed, contained sufficient information regarding the
subject matter of the claims as to enable one skilled in the pertinent art
to make and use the claimed invention. This enablement requirement of
35 U.S.C. 112(a) is separate and distinct from the written description
requirement, Ariad, 598 F.3d at 1341, and serves the purpose of "ensur[ing]
that the invention is communicated to the interested public in a meaningful
way," MPEP § 2164.
A. Written Description Requirement of 35 U.S.C. 112(a): At issue in
Vasudevan was whether the patent specification provided sufficient
written description support for a limitation of the asserted claims.
Vasudevan, 782 F.3d at 681-83. The Federal Circuit explained that "[t]he
test for the sufficiency of the written description 'is whether the
disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.' " Id. at 682 (quoting Ariad, 598 F.3d at
1351). The Federal Circuit emphasized that "[t]he written description
requirement is not met if the specification merely describes a 'desired
result.' " Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349).
Thus, in applying this standard to the computer-implemented functional
claim at issue, the Federal Circuit stated that "[t]he more telling
question is whether the specification shows possession by the inventor of
how [the claimed function] is achieved." Vasudevan, 782 F.3d at 683.
In order to satisfy the written description requirement set forth in
35 U.S.C. 112(a), the specification must describe the claimed invention in
sufficient detail such that one skilled in the art can reasonably conclude
that the inventor had possession of the claimed invention at the time of
filing. For instance, the specification must provide a sufficient
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description of an invention, not an indication of a result that one might
achieve. 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. Information
that is well known in the art need not be described in detail in the
specification. However, sufficient information must be provided to show
that the inventor had possession of the invention as claimed. See MPEP
§ 2163, subsection II(A)(2).
The analysis of whether the specification complies with the written
description requirement calls for the examiner to compare the scope of the
claim with the scope of the description to determine whether applicant has
demonstrated possession of the claimed invention. Id.; see also Reiffin v.
Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000) ("The purpose of [the
written description requirement] is to ensure that the scope of the right
to exclude, as set forth in the claims, does not overreach the scope of the
inventor's contribution to the field of art as described in the patent
specification"); LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d
1336, 1345 (Fed. Cir. 2005) ("Whether the flaw in the specification is
regarded as a failure to demonstrate that the applicant possessed the full
scope of the invention recited in [the claim] or a failure to enable the
full breadth of that claim, the specification provides inadequate support
for the claim under [§ 112(a)]"); cf. id. ("A claim will not be invalidated
on [§] 112 grounds simply because the embodiments of the specification do
not contain examples explicitly covering the full scope of the claim
language."). While "[t]here is no special rule for supporting a genus by
the disclosure of a species," the Federal Circuit has stated that
"[w]hether the genus is supported vel non depends upon the state of the art
and the nature and breadth of the genus." Hynix Semiconductor Inc. v.
Rambus Inc., 645 F.3d 1336, 1352 (Fed. Cir. 2011); id. (further explaining
that "so long as disclosure of the species is sufficient to convey to one
skilled in the art that the inventor possessed the subject matter of the
genus, the genus will be supported by an adequate written description.").
See also Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1319-21 (Fed. Cir.
2017) (affirming the Commission's findings that "the specification did not
provide the necessary written description support for the full breadth of
the asserted claims," where the claims were broadly drawn to a "container
. . . adapted to hold brewing material" while the specification disclosed
only a "pod adapter assembly" or "receptacle" designed to hold a "pod").
Computer-implemented inventions are at times disclosed and claimed in
terms of their functionality. For computer-implemented functional claims,
the determination of the sufficiency of the disclosure will require an
inquiry into the sufficiency of both the disclosed hardware and the
disclosed software (i.e., "how [the claimed function] is achieved,"
Vasudevan, 782 F.3d at 683), due to the interrelationship and
interdependence of computer hardware and software. When examining computer-
implemented, software-related claims, examiners should determine whether
the specification discloses the computer and the algorithm(s) that achieve
the claimed function in sufficient detail that one of ordinary skill in the
art can reasonably conclude that the inventor possessed the claimed subject
matter at the time of filing. An algorithm is defined, for example, as "a
finite sequence of steps for solving a logical or mathematical problem or
performing a task." Microsoft Computer Dictionary (5th ed., 2002).
Applicant may "express that algorithm in any understandable terms including
as a mathematical formula, in prose, or as a flow chart, or in any other
manner that provides sufficient structure." Finisar, 523 F.3d at 1340
(internal citation omitted). It is not enough that one skilled in the art
could theoretically write a program to achieve the claimed function, rather
the specification itself must explain how the claimed function is achieved
to demonstrate that the applicant had possession of it. See, e.g.,
Vasudevan, 782 F.3d at 682-83. If the specification does not provide a
disclosure of the computer and algorithm(s) in sufficient detail to
demonstrate to one of ordinary skill in the art that the inventor possessed
the invention that achieves the claimed result, a rejection under 35 U.S.C.
112(a) for lack of written description must be made. See MPEP § 2161.01,
subsection I.
For example, in Vasudevan, the Federal Circuit evaluated "whether the
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specification shows possession by the inventor of how accessing disparate
databases is achieved." Vasudevan, 782 F.3d at 683. The defendant in
district court argued that "the specification does not show that the
inventor had possession of the ability to access 'disparate databases' "
because "the specification describes a result, but does not show how to
achieve the result." Id. at 682. On appeal, however, the Federal Circuit
found that expert testimony given in the district court raises "a genuine
issue of material fact on whether the specification shows how to achieve
the functionality of accessing disparate databases." Id. at 683. The expert
had opined that specific portions of the specification explain "that
serialized files can be used to correlate parameters from two databases,"
and that "those correlation parameters can be used to identify data in one
database that is correlated to data in another." Id. The Federal Circuit
ruled that this expert opinion raises a genuine issue of fact as to whether
the inventor has possession of an invention that achieved the claimed
result. Id. MPEP § 2161.01, subsection I and MPEP § 2163 contain additional
information on determining whether there is adequate written description
support for computer-implemented functional claim limitations.
B. Enablement Requirement of 35 U.S.C. 112(a): At issue in Vasudevan
was also whether the patent specification enabled a person of skill in the
art to make and use the claimed invention. Vasudevan, 782 F.3d at 683-85.
The Federal Circuit explained that "[a] claim is sufficiently enabled even
if 'a considerable amount of experimentation' is necessary, so long as the
experimentation 'is merely routine, or if the specification in question
provides a reasonable amount of guidance with respect to the direction in
which the experimentation should proceed.' " Id. at 684 (quoting In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). "On the other hand, if
'undue experimentation' is needed, the claims are invalid." Id. "In
determining whether experimentation is undue, Wands lists a number of
factors to consider: 'They include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art, and (8) the breadth
of the claims.' " Id.
To satisfy the enablement requirement of 35 U.S.C. 112(a), the
specification must teach those skilled in the art how to make and use the
full scope of the claimed invention without undue experimentation. All
questions of enablement under 35 U.S.C. 112(a) are evaluated against the
claimed subject matter with the focus of the examination inquiry being
whether everything within the scope of the claim is enabled. Accordingly,
examiners should determine what each claim recites and what subject matter
is encompassed by the claim when the claim is considered as a whole, not
when its parts are analyzed individually. See MPEP § 2161.01, subsection
III, and MPEP § 2164.08.
Not everything necessary to practice the invention need be disclosed.
Trs. of Bos. Univ. v. Everlight Elecs. Co., LTD., 896 F.3d 1357, 1364 (Fed.
Cir. 2018) (explaining that while the specification must enable the full
scope of the claimed invention[,]" "[t]his is not to say that the
specification must expressly spell out every possible iteration of every
claim."). For instance, " 'a specification need not disclose what is well
known in the art.' " Id. (quoting Genentech, Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1366 (Fed. Cir. 1997)); see also AK Steel Corp. v. Sollac &
Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). This is of particular
importance with respect to computer-implemented inventions due to the high
level of skill in the art and the similarly high level of predictability in
generating programs to achieve an intended result without undue
experimentation. However, 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. See MPEP § 2161.01, subsection III, and MPEP
§ 2164.08.
The Federal Circuit has repeatedly held that the specification must
teach those skilled in the art how to make and use the full scope of the
claimed invention without undue experimentation. See Trs. of Bos. Univ.,
896 F.3d at 1364 (" 'The scope of enablement . . . is that which is
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disclosed in the specification plus the scope of what would be known to one
of ordinary skill in the art without undue experimentation.' " (quoting
Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d
1190, 1196 (Fed. Cir. 1999))). For example, in Sitrick v. Dreamworks, LLC,
516 F.3d 993 (Fed. Cir. 2008), the claims at issue were directed to
"integrating" or "substituting" a user's audio signal or visual image into
a pre-existing video game or movie. Id. at 995-97. 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. Id.
at 1000. The Federal Circuit held that the specification "did not enable
the full scope of the asserted claims" because "one skilled in the art
could not take the disclosure in the specification with respect to
substitution or integration of user images in video games and substitute a
user image for a pre-existing character image in movies without undue
experimentation." Id.
With respect to the breadth of a claim, the relevant concern is 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
claims. In making this determination, examiners should consider (1) how
broad the claim is with respect to the disclosure and (2) whether one
skilled in the art could make and use the entire scope of the claimed
invention without undue experimentation. See MPEP § 2161.01, subsection
III, and MPEP § 2164.08. A rejection for lack of enablement must be made
when the specification does not enable the full scope of the claim. For
more information regarding the enablement requirement, see MPEP §§ 2164.01
through 2164.08.
December 20, 2018 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1458 OG 338]