2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation
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I. DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, SIXTH PARAGRAPH
The USPTO must apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph in appropriate cases, and give claims their broadest reasonable interpretation, in light of and consistent with the written description of the invention in the application.
- 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) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The claim limitation is presumed to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph when it explicitly uses the term “means” or “step” and includes functional language.
- That presumption is overcome when the limitation further includes the structure necessary to perform the recited function.
By contrast, a claim limitation that does not use the term “means” or “step” will trigger the rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph does not apply.
Accordingly, examiners 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.
A. The Claim Limitation Uses the Term “Means” or “Step” or a Generic Placeholder (A Term That Is Simply A Substitute for “Means”)
With respect to the first prong of this analysis, a claim element that does not include the term “means” or “step” triggers a rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply.
When the claim limitation does not use the term “means,” examiners should determine whether the presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6 does not apply is overcome.
- The presumption may be overcome if the claim limitation uses a generic placeholder (a term that is simply a substitute for the term “means”).
The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6:
- “mechanism for,”
- “module for,”
- “device for,”
- “unit for,”
- “component for,”
- “element for,”
- “member for,”
- “apparatus for,”
- “machine for,” or
- “system for”
This list is not exhaustive, and other generic placeholders may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6.
For a term to be considered a substitute for “means,” and lack sufficient structure for performing the function, it must serve as a generic placeholder and thus not limit the scope of the claim to any specific manner or structure for performing the claimed function.
- It is important to remember that there are no absolutes in the determination of terms used as a substitute for “means” that serve as generic placeholders.
- The examiner must carefully consider the term in light of the specification and the commonly accepted meaning in the technological art.
- Every application will turn on its own facts.
B. The Term “Means” or “Step” or the Generic Placeholder Must Be Modified By Functional Language
With respect to the second prong of this analysis, it must be clear that the element in the claims is set forth, at least in part, by the function it performs as opposed to the specific structure, material, or acts that perform the function.
The mere use of the term “means” with no associated function rebuts the presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
- A function must be recited within the claim limitation, but it is not necessary that a particular format be used.
Typically, the claim limitation will use the linking word “for” to associate “means” or a generic placeholder with the function.
C. The Term “Means” or “Step” or the Generic Placeholder Must Not Be Modified By Sufficient Structure, Material, or Acts for Achieving the Specified Function
With respect to the third prong of this analysis, the term “means” or “step” or the generic placeholder recited in the claim must not be modified by sufficient definite structure, material, or acts for achieving the specified function.
Examiners will apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph to a claim limitation that uses the term“means” or “step” or generic placeholder associated with functional language, unless that term is:
- 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
- modified by sufficient structure or material for achieving the claimed function.
A limitation will not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph if there is a structural modifier that further describes the term “means” or “step” or the generic placeholder.
To determine whether a word, term, or phrase coupled with a function denotes structure, examiners should check whether:
- the specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure;
- general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and
- the prior art provides evidence that the term has an art-recognized structure to perform the claimed function.
II. DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, SIXTH PARAGRAPH
35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph states that a claim limitation expressed in means- (or step-) plus-function language “shall be construed to cover the corresponding structure…described in the specification and equivalents thereof.”
- “If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language.
- If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the 35 U.S.C. 112(b) [or the second paragraph of pre-AIA section 112].”
A. The Corresponding Structure Must Be Disclosed In the Specification Itself in a Way That One Skilled In the Art Will Understand What Structure Will Perform the Recited Function
The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.
The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means- (or step-) plus-function claim limitation.
Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device.
B. Computer-Implemented Means-Plus-Function Limitations
“[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.’
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, a general purpose computer is usually only sufficient as the corresponding structure for performing a general computing function (e.g., “means for storing data”), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor.
- Accordingly, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor.
- A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is also appropriate if the specification discloses an algorithm but the algorithm is not sufficient to perform the entire claimed function.
C. The Supporting Disclosure Clearly Links or Associates the Disclosed Structure, Material, or Acts to the Claimed Function
The structure disclosed in the written description of the specification is the corresponding structure only if the written description of the specification or the prosecution history clearly links or associates that structure to the function recited in a means- (or step-) plus-function claim limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
III. DETERMINING 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112 SECOND PARAGRAPH COMPLIANCE WHEN 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112 SIXTH PARAGRAPH IS INVOKED
Once the examiner determines that a claim limitation is a means-plus-function limitation invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the examiner should determine the claimed function and then review the written description of the specification to determine whether the corresponding structure, material, or acts that perform the claimed function are disclosed.
- Note that drawings may provide a written description of an invention as required by 35 U.S.C. 112.
A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
- when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
- when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function; and/or
- when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function.
The following guidance is provided to determine whether applicant has complied with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked:
- (A) If the corresponding structure, material or acts are described in the specification in specific terms (e.g., an emitter-coupled voltage comparator), are linked to or associated with the claimed function and one skilled in the art could identify the structure, material or acts from that description as being adequate to perform the claimed function, then the requirements of 35 U.S.C. 112(b) and (f) or pre-AIA 35 U.S.C. 112, second and sixth paragraphs and are satisfied.
- (B) If the corresponding structure, material or acts are described in the specification in broad generic terms and the specific details of which are incorporated by reference to another document (e.g., attachment means disclosed in U.S. Patent No. X, which is hereby incorporated by reference, or a comparator as disclosed in the Y article, which is hereby incorporated by reference), Office personnel must review the description in the specification, without relying on any material from the incorporated document, and apply the "one skilled in the art" analysis to determine whether one skilled in the art could identify the corresponding structure (or material or acts) for performing the recited function to satisfy the definiteness requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
- (1) If one skilled in the art would be able to identify the structure, material or acts from the description in the specification for performing the recited function, then the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, are satisfied.
- (2) If one skilled in the art would not be able to identify the structure, material or acts from description in the specification for performing the recited function, then applicant will be required to amend the specification to contain the material incorporated by reference, including the clear link or associated structure, material or acts to the function recited in the claim.
IV. DETERMINING WHETHER 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, FIRST PARAGRAPH SUPPORT EXISTS
A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function may also lack adequate written description and/or not be sufficiently enabled to support the full scope of the claim.
- Thus, the means- (or step-) plus- function claims must still be analyzed to determine whether there exists corresponding adequate support for such claim under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness.
V. SINGLE MEANS CLAIMS
A single means claim is a claim that recites a means-plus-function limitation as the only limitation of a claim.
- The long-recognized problem with a single means claim is that it covers every conceivable means for achieving the stated result, while the specification discloses at most only those means known to the inventor.
As such, they are not limited to the structure, material or act disclosed in the specification.
- Thus, a single means limitation that is properly construed will cover all means of performing the claimed function.
- A claim of such breadth reads on subject matter that is not enabled by the specification, and therefore, should be rejected under section 112(a) or pre-AIA section 112, first paragraph.
VI. ENSURE THAT THE RECORD IS CLEAR
When an examiner interprets a claim limitation under the provisions of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the Office action should specify that the examiner has done so.
- When claim terms other than “means” or "step" are determined to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the reasons why the claim was interpreted as invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should also be clearly stated in the Office action.
