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.

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


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Topics

Overview of 112(f) for Means-type Claims Builds on 2011 § 112 Supplemental

Guidelines and Training

The 3-Prong Analysis

Examples

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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

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Importance of Identifying 112(f) Limitations

Governs broadest reasonable interpretation of the claim limitation

Prevents potential over assertion of claims

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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

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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”

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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”

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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

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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

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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

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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”


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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

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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

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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


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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

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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

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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


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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


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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

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Example 6

A display 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: Structure, in the form of a display, is recited

to perform the function

Fails Prong C:112(f) NOT invoked

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Example 7

A display for displaying a result from a search query


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

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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

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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.

Documents

united states patent

substitute term

claim limitation

claim element

f presumption

trademark office absence

trademark office importance

f example