Post on 28-Mar-2015
UNITED STATES PATENT AND TRADEMARK OFFICE
A full transcript of this presentation can be found under the “Notes” Tab.
35 USC 112 (f)*:Identifying Limitations That Invoke 112(f)
* 35 USC 112, 6th paragraph for cases filed before 9/16/2012
UNITED STATES PATENT AND TRADEMARK OFFICE
2
Topics
Overview of 112(f) for Means-type Claims Builds on 2011 § 112 Supplemental
Guidelines and Training
The 3-Prong Analysis
Examples
2
UNITED STATES PATENT AND TRADEMARK OFFICE
3
Purpose of Refresher Training
To reinforce 2011 § 112 training on tools to set boundaries for functional claim language
Topic of 2013 Software Partnership Roundtables
Ongoing public discussion regarding clear claim boundaries
3
UNITED STATES PATENT AND TRADEMARK OFFICE
Importance of Identifying 112(f) Limitations
Governs broadest reasonable interpretation of the claim limitation
Prevents potential over assertion of claims
4
UNITED STATES PATENT AND TRADEMARK OFFICE
112(f) Overview
3-prong Analysis for Means-type Claims
Following MPEP 2181(I), a claim limitation should be interpreted according to 112(f) if it meets the following 3-prong analysis:
A. The claim limitation uses the phrase “means” or a term used as a substitute for “means” that is a generic placeholder;
B. The phrase “means” or the substitute term is modified by functional language, typically linked by the transition word “for” (e.g., “means for”) or another linking word; and
C. The phrase “means” or the substitute term is not modified by sufficient structure or material for performing the claimed function
5
UNITED STATES PATENT AND TRADEMARK OFFICE
The term “means” with functional language raises a rebuttable presumption that the claim element is to be treated under § 112(f)
The presumption is rebutted when the function is recited with sufficient structure or material within the claim itself to entirely perform the recited function
112(f) Presumption for “Means”
6
UNITED STATES PATENT AND TRADEMARK OFFICE
Absence of the term “means” with functional language raises a rebuttable presumption that the claim element is not to be treated under § 112(f) The presumption is rebutted when the claim element (1) recites a
generic placeholder for structure or material; (2) recites a function; and (3) does not recite sufficient structure or material to perform the function.
Terms that represent only non-structural elements such as information, data, instructions, and software per se would not serve as substitutes for “means”, because the terms do not serve as placeholders for structure or material.
112(f) Presumption in the Absence of “Means”
7
UNITED STATES PATENT AND TRADEMARK OFFICE
Example limitation where 112(f) is not invoked: “module for processing data, wherein the module is stored in a memory”
• The module is described in the specification as software in the form of an algorithm or machine-readable instructions.
• In this case, module is not a generic placeholder for a structural element since the module is stored in a memory and therefore is being used to represent only a non-structural element. The non-structural element is software that is a purely functional limitation.
Limits on Using Section 112(f) - Example
8
UNITED STATES PATENT AND TRADEMARK OFFICE
9
Prong A – Means-type claims
Prong A is met when the claim language: Explicitly uses the phrase “means” or
Uses a term as a substitute for “means” that is a generic placeholder (i.e., the term is simply a verbal construct or fails to recite sufficient structure to perform the function) This substitute term is sometimes referred to as a
non-structural nonce word
Examples: Means for ink delivery Unit for delivering ink
9
UNITED STATES PATENT AND TRADEMARK OFFICE
10
Prong A – Substitute for “means”
For a term to be a substitute for “means” (and lack sufficient structure), it must:
Be a generic placeholder and not limit the scope of the claim to any specific manner/structure for performing the claimed function
There are no absolutes in the determination of terms used as a substitute for “means”
The examiner must carefully consider the term in light of the specification and the accepted meaning in the technology
10
UNITED STATES PATENT AND TRADEMARK OFFICE
11
Prong A – Substitute for “means”
Claim Limitation: mechanism for delivering ink
Specification 1The mechanism for delivering ink can be a piezoelectric printhead, thermal printhead or laser printhead.
‘Mechanism’ is used in the claim in a generic manner. One of ordinary skill would understand that ‘mechanism’ is not limited to a specific structure for performing the function.
Substitute for “means”11
Specification 2The mechanism for delivering ink is preferably a laser printhead.
Although a preferred embodiment is described, ‘mechanism’ is used in the claim in a generic manner. One of ordinary skill would understand that ‘mechanism’ is not the name for the specific structure for performing the function. Substitute for “means”
UNITED STATES PATENT AND TRADEMARK OFFICE
12
Prong B – Means-type claims
Prong B is met when:
The phrase “means” or the substitute term is modified by functional language, typically linked by the transition word “for” (e.g., “means for”) or another linking word
Examples: Means for ink delivery Module for delivering ink
12
UNITED STATES PATENT AND TRADEMARK OFFICE
13
Linking Words
It is not required that the transition “for” be used to link “means” or the substitute term to the function
Other linking words can be used, such as “so that”, or “configured for”, provided it is clear that a function is being recited
In certain circumstances, it is also not necessary to use a linking word if other words used convey the function without imparting structure
Examples: Ink delivery means Module configured to deliver ink
13
UNITED STATES PATENT AND TRADEMARK OFFICE
14
Prong C – Means-type claims
Prong C is met when: The phrase “means” or the generic placeholder is not
further modified by sufficient structure or material for performing the claimed function
Examples:
Means for ink deliveryProng C met - no structural recitation
Ink jet means for ink deliveryFails Prong C - modified by “ink jet” which is sufficient structure for achieving specified function
Means for ink delivery having an ink delivery tubeFails Prong C – modified by “tube” which is
sufficient structure for achieving specified function14
UNITED STATES PATENT AND TRADEMARK OFFICE
15
Example 1
Means for displaying a result of a search query
Prong A: Explicit recitation of “means” Prong B: Functional recitation of “for displaying a
result of a search query” Prong C: No structure that performs the function
Meets 3-prong analysis: 112(f) invoked
15
UNITED STATES PATENT AND TRADEMARK OFFICE
16
Example 2
Means configured to display a result from a search query
Prong A: Explicit recitation of “means” Prong B: Functional recitation of “configured to
display a result from a search query” Prong C: No structure that performs the function
Meets 3-prong analysis:112(f) invoked
16
UNITED STATES PATENT AND TRADEMARK OFFICE
17
Example 3
Module for displaying a result from a search query
Specification: the module can be hardware (such as a circuit), software (such as a program driver) or a combination thereof (such as a programmed microprocessing unit)
Prong A: “Module” is being used as a generic placeholder that is a substitute for “means” based on an evaluation of the specification
Prong B: Functional recitation of “for displaying a result from a search query”
Prong C: No structure that performs the function
Meets 3-prong analysis:112(f) invoked
17
UNITED STATES PATENT AND TRADEMARK OFFICE
18
Example 4
Displaying means
Prong A: Explicit recitation of “means” Prong B: A clear function of “displaying” is recited Prong C: No structure that performs the function
Meets 3-prong analysis:112(f) invoked
18
UNITED STATES PATENT AND TRADEMARK OFFICE
19
Example 5
A display means
Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen.
Prong A: Explicit recitation of “means” Prong B: No associated function recited Prong C: Not applicable because no function recited
Fails Prong B:112(f) NOT invoked
19
UNITED STATES PATENT AND TRADEMARK OFFICE
20
Example 6
A display means for displaying a result of a search query
Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen.
Prong A: Explicit recitation of “means” Prong B: Functional recitation of “for displaying a
result of a search query” Prong C: Structure, in the form of a display, is recited
to perform the function
Fails Prong C:112(f) NOT invoked
20
UNITED STATES PATENT AND TRADEMARK OFFICE
21
Example 7
A display for displaying a result from a search query
Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen.
Prong A: No “means” or substitute term Prong B: Functional recitation of “for displaying a
result from a search query” Prong C: Structure in the form of a display that
performs the function
Fails Prong A and C:112(f) NOT invoked
21
UNITED STATES PATENT AND TRADEMARK OFFICE
22
Summary
Determine that § 112(f) is invoked when a claim element with functional language uses: Means or a generic placeholder Coupled to a function With no structure to perform the function
Case-by-case basis using claim language, specification, and knowledge in the art as a guide
Treatment of elements that invoke means-plus-function is evolving Office has sought public input on examination of § 112(f)
elements Examination guidance may be adjusted when appropriate in
response to public feedback and judicial developments
22