On March 18, 2024, the US Patent & Trademark Business office (PTO) issued a memorandum to patent examiners addressing means-as well as-functionality and phase-in addition-perform declare limits and how to clearly articulate, in the prosecution report, the PTO’s interpretation of this sort of claim limits. The target of the memorandum is to assure consistency in relationship with the assessment of this sort of limits, give the two the applicant and the community with discover pertaining to the assert interpretation utilised by the patent examiner, and present the applicant an prospect to progress a various declare interpretation early in the prosecution.
As stated in 35 U.S.C. §112(f), “[a]n element in a declare for a blend may well be expressed as a usually means or move for carrying out a specified functionality without the need of the recital of structure, materials, or acts in assistance thereof, and such declare shall be construed to deal with the corresponding structure, product, or acts described in the specification and equivalents thereof.” The memorandum does not suggest any improvements in interpretation of the statute.
A single component of the memorandum is to remind examiners of the sources and advice readily available when examining suggests-plus-purpose and action-as well as-purpose claim restrictions, specifically MPEP §§ 2181-2187 and refresh training. In accordance with the advice, the principal ways when analyzing such assert factors incorporate:
- Determining regardless of whether a assert limitation invokes § 112(f)
- Guaranteeing the report is clear with regard to invoking § 112(f)
- Evaluating the description necessary to assist a § 112(f) declare limitation underneath §§ 112(a) and (b).
To determine whether or not a assert limitation invokes §112(f), the guidance instructs examiners to hire the three-prong examination set forth in MPEP § 2181, subsection I. Using this analysis, recitation of the phrases “means” or “step” in affiliation with useful language, somewhat than framework, content or acts for doing that perform, should be interpreted as assert limits invoking § 112(f). Nonetheless, where these terms are accompanied by framework, components or acts for executing the function, § 112(f) is not invoked. On the other hand, a limitation reciting practical language along with a generic placeholder phrase as an alternative of “means,” which fails to recite adequately definite construction for carrying out the operate, would nevertheless invoke § 112(f), according to a suitable examination. Illustrations of these kinds of generic placeholders incorporate “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for” and “system for.”
An crucial caveat in the memorandum states that “[e]stablishing the interpretation of § 112(f) constraints in creating through prosecution is essential in supporting the agency aim of setting up a obvious prosecution document.” The steerage advises examiners that kind paragraphs are available in assist of conference this goal, which provide to inform “the applicant, the community, and the courts . . . as to the declare construction the examiner applied throughout prosecution. This additional informs the applicant, the public, and the courts (and the PTO for any write-up-grant assessment treatments) as to how the examiner searched and used prior artwork based on the examiner’s interpretation of the declare.”
The memorandum additional emphasizes the want to assess no matter if statements beneath §112(f) satisfy the written description and enablement prerequisites of § 112(a) and the definiteness necessity of § 112(b). Concerning the latter, the specification should evidently disclose a construction that is evidently connected to or related with the operate, which would be recognized by one experienced in the art to execute the whole recited perform. Further, “[f]or personal computer-carried out § 112(f) assert limits, the specification must disclose an algorithm for performing the claimed precise laptop or computer function . . . [and] sufficiency of the disclosure of the algorithm need to be determined in mild of the stage of everyday talent in the artwork.”
The memorandum further states that an indefinite § 112(f) assert limitation “based on failure of the specification to disclose corresponding structure that performs the complete claimed purpose will also lack adequate written description and could not be sufficiently enabled to assist the full scope of the declare less than § 112(a).” As a result, in any § 112(f) analysis, an examiner need to determine irrespective of whether the specification establishes possession of the claimed creation and whether ample data is offered to allow just one expert in the pertinent artwork to make and use the claimed invention.
For even further specifics, see the memorandum here and the Federal Sign-up notice here.