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2185 Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs
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If a means- (or step-) plus-function limitation recited in a claim is not supported by corresponding structure, material or acts in the specification disclosure, the following rejections should be considered:
- (A) under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not being supported by an enabling disclosure because the person skilled in the art would not know how to make and use the invention without a description of elements to perform the function.
- The description of an apparatus with block diagrams describing the function, but not the structure, of the apparatus is not fatal under the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as long as the structure is conventional and can be determined without an undue amount of experimentation.
- (B) under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as lacking adequate written description because the specification does not 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.
- As an example, if the means- (or step-) plus-function limitation is computer-implemented, and 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, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made;
- (C) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite; and
- (D) under 35 U.S.C. 102 or 103 where the prior art anticipates or renders obvious the claimed subject matter including the means or step that performs the function specified in the claim, the theory being that since there is no corresponding structure, etc., in the specification to limit the means- (or step-) plus- function limitation, an equivalent is any element that performs the specified function.
