Case 5:15-cv-02008-EJD Document 83-7 Filed 04/12/16 Page 1 of 7
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`EXHIBIT 7
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`DECLARATION OF MELODY DRUMMOND HANSEN IN SUPPORT OF DEFENDANT’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`Case No. 5:15-CV-02008-EJD
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`

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`Case 5:15-cv-02008-EJD Document 83-7 Filed 04/12/16 Page 2 of 7
`PATENTABILITY
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`§ 2181
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`proper interpretation of the limitations of a claim, it
`would not be proper to reject such a claim on the
`basis of prior art. As stated in In re Steele, 305 F.2d
`859, 134 USPQ 292 (CCPA 1962), a rejection under
`35 U.S.C. 103 should not be based on considerable
`speculation about the meaning of terms employed
`in a claim or assumptions that must be made as to
`the scope of the claims.
`
`The first approach is recommended from an
`examination standpoint because it avoids piecemeal
`examination in the event that the examiner’s 35
`U.S.C. 112, second paragraph rejection is not
`affirmed, and may gi ve applicant a better
`appreciation for relevant prior art if the claims are
`redrafted to avoid the 35 U.S.C. 112(b) or pre-AIA
`35 U.S.C. 112, second paragraph rejection.
`
`2174 Relationship Between the Requirements
`of 35 U.S.C. 112(a) and (b) or Pre-AIA 35
`U.S.C. 112, First and Second Paragraphs
`[R-11.2013]
`
`The requirements of 35 U.S.C. 112(a) and (b) or the
`first and second paragraphs of pre-AIA 35 U.S.C.
`112 are separate and distinct. If a description or the
`enabling disclosure of a specification is not
`commensurate in scope with the subject matter
`encompassed by a claim, that fact alone does not
`render the claim imprecise or indefinite or otherwise
`not in compliance with 35 U.S.C. 112(b) or pre-AIA
`35 U.S.C. 112, second paragraph; rather, the claim
`is based on an insufficient disclosure ( 35 U.S.C.
`112(a) or pre-AIA 35 U.S.C. 112, first paragraph)
`and should be rejected on that ground. In
`re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA
`1970). If the specification discloses that a particular
`feature or element is critical or essential to the
`practice of the invention, failure to recite or include
`that particular feature or element in the claims may
`provide a basis for a rejection based on the ground
`that those claims are not supported by an enabling
`disclosure. In re Mayhew, 527 F.2d 1229, 188 USPQ
`356 (CCPA 1976). In Mayhew, the examiner argued
`that the only mode of operation of the process
`disclosed in the specification in volved the use of a
`cooling zone at a particular location in the processing
`cycle. The claims were rejected because they failed
`to specify either a cooling step or the location of the
`step in the process. The court was convinced that
`
`the cooling bath and its location were essential, and
`held that claims which failed to recite the use of a
`cooling zone, specifically
`located, were not
`supported by an enabling disclosure (35 U.S.C. 112,
`first paragraph).
`
`In addition, if a claim is amended to include an
`invention that is not described in the application as
`filed, a rejection of that claim under 35 U.S.C. 112(a)
`or pre-AIA 35 U.S.C. 112, first paragraph, as being
`directed to subject matter that is not described in the
`specification as filed may be appropriate.
` In
`re Simon, 302 F.2d 737, 133 USPQ 524 (CCPA
`1962). In Simon, which involved a reissue
`application containing claims to a reaction product
`of a composition, applicant presented claims to a
`reaction product of a composition comprising the
`subcombination A+B+C, whereas the original claims
`and description of the invention were directed to a
`composition
`comprising
`the
`combination
`A+B+C+D+E. The court found no significant
`support for the argument that ingredients D+E were
`not essential to the claimed reaction product and
`concluded that claims directed to the reaction product
`of a subcombination A+B+C were not described (35
`U.S.C. 112, first paragraph) in the application as
`filed. See also In re Panagrossi, 277 F.2d 181, 125
`USPQ 410 (CCPA 1960).
`
`2175
`-2180 [Reserved]
`
`2181 Identifying and Interpreting a 35 U.S.C.
`112(f) or Pre-AIA 35 U.S.C. 112, Sixth
`Paragraph Limitation [R-07.2015]
`
`This section sets forth guidelines for the examination
`of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`paragraph, “means or step plus function” limitations
`in a claim. These guidelines are based on the Office’ s
`current understanding of the law and are believed to
`be fully consistent with binding precedent of the
`Supreme Court, the Federal Circuit and the Federal
`Circuit’s predecessor courts. These guidelines do
`not constitute substantive rulemaking and hence do
`not have the force and effect of law.
`
`2100-311
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`Rev. 07.2015, November 2015
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`

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`§ 2181
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`Case 5:15-cv-02008-EJD Document 83-7 Filed 04/12/16 Page 3 of 7
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`The Court of Appeals for the Federal Circuit, in its
` en banc decision In re Donaldson Co., 16 F.3d
`1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir.
`1994), held that a “means-or-step-plus-function”
`limitation should be interpreted as follows:
`
`Per our holding, the “broadest reasonable
`interpretation” that an examiner may give
`means-plus-function language is that statutorily
`mandated in paragraph six. Accordingly, the
`PTO may not disregard the structure disclosed
`in the specification corresponding to such
`language when rendering a patentability
`determination.
`
`Therefore, the broadest reasonable interpretation of
`a claim limitation that invokes 35 U.S.C. 112(f) or
`pre-AIA 35 U.S.C. 112, sixth paragraph, is the
`structure, material or act described
`in
`the
`specification as performing the entire claimed
`function and equivalents to the disclosed structure,
`material or act. As a result, section 112(f) or pre-AIA
`section 112, sixth paragraph, limitations will, in
`some cases, be afforded a more narrow interpretation
`than a limitation that is not crafted in “means plus
`function” format.
`
`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. See Donaldson, 16 F.3d at 1194, 29
`USPQ2d at 1850 (stating that 35 U.S.C. 112, sixth
`paragraph “merely sets a limit on how broadly the
`PTO may construe means-plus-function language
`under the rubric of reasonable interpretation’”). The
`Federal Circuit has held that applicants (and
`reexamination patentees) before the USPTO have
`the opportunity and the obligation to define their
`inventions precisely during proceedings before the
`USPTO. See In re Morris, 127 F.3d 1048, 1056–57,
`44 USPQ2d 1023, 1029–30 (Fed. Cir. 1997) (35
`U.S.C. 112, second paragraph places the burden of
`precise claim drafting on the applicant); In re Zletz,
`893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed.
`
`Cir. 1989) (manner of claim interpretation that is
`used by courts in litigation is not the manner of claim
`interpretation that is applicable during prosecution
`of a pending application before the USPTO); Sage
`Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420,
`1425, 44 USPQ2d 1103, 1107 (Fed. Cir. 1997)
`(patentee who had a clear opportunity to negotiate
`broader claims during prosecution but did not do so,
`may not seek to expand the claims through the
`doctrine of equivalents, for it is the patentee, not the
`public, who must bear the cost of failure to seek
`protection for this foreseeable alteration of its
`claimed structure).
`
`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.
` TriMed, Inc. v. Stryker Corp., 514 F.3d 1256,
`1259-60, 85 USPQ2d 1787, 1789 (Fed. Cir. 2008)
`(“Sufficient structure e xists when the claim language
`specifies the e xact structure that performs the
`function in question without need to resort to other
`portions of the specification or e xtrinsic evidence
`for an adequate understanding of the structure.”);
`see also Altiris, Inc. v. Symantec Corp., 318 F.3d
`1363, 1376, 65 USPQ2d 1865, 1874 (Fed. Cir.
`2003).
`
`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. See,
`e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1310,
`75 USPQ2d 1321, 1324 (Fed. Cir. 2005) (en banc);
` CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1369, 62 USPQ2d 1658, 1664 (Fed. Cir.
`2002); Personalized Media Commc’ns, LLC v. ITC,
`161 F.3d 696, 703-04, 48 USPQ2d 1880, 1886–87
`(Fed. Cir. 1998). The presumption is overcome when
`"the claim term fails to 'recite sufficiently definite
`structure' or else recites 'function without reciting
`sufficient structure for performing that function.'"
` Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`
`Rev. 07.2015, November 2015
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`2100-312
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`

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`Case 5:15-cv-02008-EJD Document 83-7 Filed 04/12/16 Page 4 of 7
`PATENTABILITY
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`§ 2181
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`1348, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015) ( en
`banc) (quoting Watts v. XL Systems, Inc., 232 F.3d
`877, 880 (Fed. Cir. 2000); see also Personalized
`Media Communications, LLC v. International Trade
`Commission, 161 F. 3d 696, 704 (Fed. Cir. 1998).
`Instead of using "means" or "step" in such cases, a
`substitute term acts as a generic placeholder for the
`term "means" and would not be recognized by one
`of ordinary skill in the art as being sufficiently
`definite structure for performing the claimed
`function. "The standard is whether the words of the
`claim are understood by persons of ordinary skill in
`the art to have a sufficiently definite meaning as the
`name for structure." Williamson, 792 F.3d at 1349,
`115 USPQ2d at 1111; see also Greenberg v. Ethicon
`Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
`1996).
`
`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.” Welker Bearing
`Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d
`1289, 1293-94 (Fed. Cir. 2008); Massachusetts Inst.
`of Tech. v. Abacus Software, 462 F.3d 1344, 1354,
`80 USPQ2d 1225, 1228 (Fed. Cir. 2006);
` Personalized Media, 161 F.3d at 704, 48 USPQ2d
`at 1886–87; Mas-Hamilton Group v. LaGard, Inc.,
`156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017
`(Fed. Cir. 1998). 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.
`
`However, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.
`112, paragraph 6 will not apply if persons of ordinary
`skill in the art reading the specification understand
`the term to have a sufficiently definite meaning as
`the name for the structure that performs the function,
`even when the term covers a broad class of structures
`or identifies the structures by their function (e.g.,
`“filters, ” “brakes,” “clamp,” “screwdriver,” and
`“locks”). Apex Inc. v. Raritan Computer, Inc., 325
`F.3d 1364, 1372-73, 66 USPQ2d 1444, 1451-52
`(Fed. Cir. 2003); CCS Fitness, 288 F.3d at 1369,
`62 USPQ2d at 1664; Watts v. XL Sys. Inc., 232 F.3d
`877, 880-81, 56 USPQ2d 1836, 1839 (Fed. Cir.
`2000); Personalized Media, 161 F.3d at 704, 48
`USPQ2d at 1888;
` Greenberg v. Ethicon
`Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 USPQ2d
`1783, 1786 (Fed. Cir. 1996) (“Many devices take
`their names from the functions they perform.”) The
`term is not required to denote a specific structure or
`a precise physical structure to avoid the application
`of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`paragraph 6. See Watts, 232 F.3d at 880, 56
`USPQ2d at 1838; Inventio AG v. Thyssenkrupp
`Elevator Americas Corp., 649 F.3d 1350, 99
`USPQ2d 1112 (Fed. Cir. 2011) (holding that the
`claim terms "modernizing device" and "computing
`unit" when read in light of the specification connoted
`sufficient, definite structure to one of skill in the art
`to preclude application of 35 U.S.C. 112, sixth
`
`2100-313
`
`Rev. 07.2015, November 2015
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`

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`§ 2181
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`Case 5:15-cv-02008-EJD Document 83-7 Filed 04/12/16 Page 5 of 7
`MANUAL OF PATENT EXAMINING PROCEDURE
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`paragraph). The following are examples of structural
`terms that have been found not to invoke 35 U.S.C.
`112(f) or pre-AIA 35 U.S.C. 112, paragraph 6:
`“circuit,” “detent mechanism,” “digital detector,”
`“reciprocating member,” “connector assembly,”
`“perforation,” “sealingly connected joints,” and
`“eyeglass hanger member.” See Mass. Inst. of Tech.,
`462 F.3d at 1355-1356, 80 USPQ2d at 1332 (the
`court found the recitation of "aesthetic correction
`circuitry" sufficient to a void pre-AIA 35 U.S.C. 112,
`paragraph 6, treatment because the term circuit,
`combined with a description of the function of the
`circuit, connoted sufficient structure to one of
`ordinary skill in the art.); Linear Tech. Corp. v.
`Impala Linear Corp., 379 F.3d 1311, 1321, 72
`USPQ2d 1065, 1071 (Fed. Cir. 2004); Apex, 325
`F.3d at 1373, 66 USPQ2d at 1452; Greenberg, 91
`F.3d at 1583-84, 39 USPQ2d at 1786; Personalized
`Media, 161 F.3d at 704-05, 39 USPQ2d at 1786;
` CCS Fitness, 288 F.3d at 1369-70, 62 USPQ2d at
`1664-65; Cole v. Kimberly-Clark Corp., 102 F.3d
`524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881,
`56 USPQ2d at 1839; Al-Site Corp. v. VSI Int’l, Inc.,
`174 F.3d 1308, 1318-19, 50 USPQ2d 1161, 1166-67
`(Fed. Cir. 1999).
`
`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.
`
`If the examiner has not interpreted a claim limitation
`as invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.
`112, sixth paragraph and an applicant wishes to have
`the claim limitation treated under 35 U.S.C. 112(f)
`or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant
`must either: (A) amend the claim to include the
`phrase “means” or “step”; or (B) rebut the
`presumption that 35 U.S.C. 112(f) or pre-AIA 35
`U.S.C. 112, sixth paragraph does not apply by
`showing that the claim limitation is written as a
`function to be performed and does not recite
`
`sufficient structure, material, or acts to perform that
`function. See Watts, 232 F.3d at 881, 56 USPQ2d
`at 1839 (Fed. Cir. 2000) (Claim limitations were
`held not to invoke 35 U.S.C. 112, sixth paragraph,
`because the absence of the term “means” raised the
`presumption that the limitations were not in
`means-plus-function form and the applicant did not
`rebut that presumption.); see also Masco Corp. v.
`United States, 303 F.3d 1316, 1327, 64 USPQ2d
`1182, 1189 (Fed. Cir. 2002) (“[W]here a method
`claim does not contain the term ‘step[s] for,’ a
`limitation of that claim cannot be construed as a
`step-plus-function limitation without a showing that
`the limitation contains no act.”).
`
`Some of the following examples illustrate situations
`where the term “means” or “step” was not used but
`either the Board or courts nevertheless determined
`that the claim limitation fell within the scope of 35
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`paragraph. Note that the examples are fact specific
`and should not be applied as per se rules. See
` Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352,
`1356, 50 USPQ2d 1372, 1374–75 (Fed. Cir.1999)
`(“ink delivery means positioned on …” invokes
`35 U.S.C. 112, sixth paragraph since the phrase “ink
`delivery means” is equivalent to “means for ink
`delivery”); Seal-Flex, Inc. v. Athletic Track and
`Court Construction, 172 F.3d 836, 850, 50 USPQ2d
`1225, 1234 (Fed. Cir. 1999) (Rader, J., concurring)
`(“Claim elements without express step-plus-function
`language may nevertheless fall within Section 112,
`Para. 6 if they merely claim the underlying function
`without recitation of acts for performing that
`function…. In general terms, the ‘underlying
`function’ of a method claim element corresponds to
` what that element ultimately accomplishes in
`relationship to what the other elements of the claim
`and the claim as a whole accomplish. ‘Acts,’ on the
`other hand, correspond to how the function is
`accomplished…. If the claim element uses the phrase
`‘step for,’ then Section 112, Para. 6 is presumed to
`apply…. On the other hand, the term ‘step’ alone
`and the phrase ‘steps of’ tend to show that Section
`112, Para. 6 does not govern that limitation.”);
` Personalized Media, 161 F.3d at 703–04, 48
`USPQ2d
`at
`1886–87
`(Fed. Cir.
`1998);
` Mas-Hamilton, 156 F.3d at 1213, 48 USPQ2d at
`1016 (Fed. Cir. 1998) (“lever moving element for
`moving the lever” and “movable link member for
`
`Rev. 07.2015, November 2015
`
`2100-314
`
`

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`Case 5:15-cv-02008-EJD Document 83-7 Filed 04/12/16 Page 6 of 7
`PATENTABILITY
`
`§ 2181
`
`holding the lever…and for releasing the lever” were
`construed as means-plus-function
`limitations
`invoking 35 U.S.C. 112, sixth paragraph since the
`claimed limitations were described in terms of their
`function rather than their mechanical structure);
` Ethicon, Inc. v. United States Surgical Corp., 135
`F.3d 1456, 1463, 45 USPQ2d 1545, 1550 (Fed. Cir.
`1998) (“use of the word ‘means’ gives rise to a
`presumption that the inventor used the term
`advisedly to invoke the statutory mandates for
`means-plus-function clauses”) (quotation omitted).
`However, compare Al-Site Corp. v. VSI Int’l, Inc.,
`174 F.3d 1308, 1317-19, 50 USPQ2d 1161, 1166-67
`(Fed. Cir. 1999) (holding that although the claim
`elements “eyeglass hanger member” and “eyeglass
`contacting member” include a function, these claim
`elements do not invoke 35 U.S.C. 112, sixth
`paragraph because the claims themselves contain
`sufficient structural limitations for performing these
`functions); O.I. Corp. v. Tekmar, 115 F.3d 1576,
`1583, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997)
`(method claim that paralleled means-plus-function
`apparatus claim but lacked “step for” language did
`not invoke 35 U.S.C. 112, sixth paragraph).
`
`When applicant uses the term “means” or “step” in
`the preamble, a rejection under 35 U.S.C. 112(b) or
`pre-AIA 35 U.S.C. 112, second paragraph may be
`appropriate when it is unclear whether the preamble
`is reciting a means- (or step-) plus- function
`limitation or whether the preamble is merely stating
`the intended use of the claimed invention. If
`applicant uses a structural or generic placeholder
`with the word “for” or other linking word in the
`preamble, the examiner should not construe such
`phrase as reciting a means-plus-function limitation.
`
`that, absent a
`reminded
`is
`The Examiner
`determination that a claim limitation invokes 35
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`paragraph, the broadest reasonable interpretation
`will not be limited to “corresponding structure…
`and equivalents thereof.” Morris, 127 F.3d at 1055,
`44 USPQ2d at 1028 (“no comparable mandate in
`the patent statute that relates the claim scope of
`non-§ 112 paragraph 6 claims to particular matter
`found in the specification”).
`
`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. See York Prod., Inc. v.
`Central Tractor Farm & Family Center, 99 F.3d
`1568, 1574, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996)
`(holding that a claim limitation containing the term
`“means” does not invoke 35 U.S.C. 112, sixth
`paragraph, if the claim limitation does not link the
`term “means” to a specific function). Caterpillar
`Inc. v. Detroit Diesel Corp., 41 USPQ2d 1876, 1882
`(N.D. Ind. 1996) (stating that 35 U.S.C. 112, sixth
`paragraph, “applies to functional method claims
`where the element at issue sets forth a step for
`reaching a particular result, but not the specific
`technique or procedure used to achieve the result.”);
`O.I. Corp., 115 F.3d at 1582-83, 42 USPQ2d at 1782
`(With respect to process claims, “[35 U.S.C. 112,
`sixth paragraph] is implicated only when steps plus
`function without acts are present…. If we were to
`construe every process claim containing steps
`described by an ‘ing’ verb, such as passing, heating,
`reacting, transferring, etc., into a step-plus-function,
`we would be limiting process claims in a manner
`never intended by Congress.” (emphasis in original));
`see also Baran v. Medical Device Techs., Inc., 616
`F.3d 1309, 1317, 96 USPQ2d 1057, 1063 (Fed. Cir.
`2010) (the claimed function may include the
`functional language that precedes the phrase “means
`for.”). However, “the fact
`that a particular
`mechanism…is defined in functional terms is not
`sufficient to con vert a claim element containing that
`term into a ‘means for performing a specified
`function’ within the meaning of section 112(6).”
` Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d
`1580, 1583, 39 USPQ2d 1783, 1786 (Fed. Cir. 1996)
`(“detent mechanism” defined in functional terms
`was not intended to invoke 35 U.S.C. 112, sixth
`paragraph); see also
` Al-Site Corp. v. VSI
`International Inc., 174 F.3d 1308, 1318, 50 USPQ2d
`1161, 1166–67 (Fed. Cir. 1999) (although the claim
`elements “eyeglass hanger member” and “eyeglass
`contacting member” include a function, these claim
`elements do not invoke 35 U.S.C. 112, sixth
`paragraph, because the claims themselves contain
`sufficient structural limitations for performing those
`
`2100-315
`
`Rev. 07.2015, November 2015
`
`

`
`§ 2181
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`Case 5:15-cv-02008-EJD Document 83-7 Filed 04/12/16 Page 7 of 7
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`functions). Also, a statement of function appearing
`only in the claim preamble is generally insufficient
`to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.
`112, sixth paragraph. O.I. Corp., 115 F.3d at 1583,
`42 USPQ2d at 1782 (“[A] statement in a preamble
`of a result that necessarily follows from performing
`a series of steps does not convert each of those steps
`into step- plus-function clauses. The steps of
`‘passing’ are not individually associated in the claims
`with functions performed by the steps of passing.”).
`
`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. However,
`other linking words may be used, such as “so that”
`or “configured to”, pro vided it is clear that the claim
`element
`is
`reciting a
`function.
`In certain
`circumstances, it is also not necessary to use a
`linking word if other words used with “means”, or
`the generic placeholder, convey the function. Such
`words, however, cannot convey specific structure
`for performing the function or the phrase will not be
`treated as invoking 35 U.S.C. 112(f) or pre-AIA 35
`U.S.C. 112, sixth paragraph. For example, “ink
`delivery means”, “module configured to deli ver ink”
`and “means for ink delivery” could all be interpreted
`as claim elements that invoke 35 U.S.C. 112(f) or
`pre-AIA 35 U.S.C. 112, sixth paragraph. See
` Signtech USA, 174 F.3d at 1356.
`
`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
`sufficiently definite structure, material, or acts for
`achieving the specified function. See Seal-Flex, 172
`F.3d at 849, 50 USPQ2d at 1234 (Radar, J.,
`concurring) (“Even when a claim element uses
`language
`that
`generally
`falls
`under
`the
`step-plus-function format, however, [35 U.S.C.] 112
`¶ 6 still does not apply when the claim limitation
`
`itself recites sufficient acts for performing the
`specified function. ”); Envirco Corp. v. Clestra
`Cleanroom, Inc., 209 F.3d 1360, 54 USPQ2d 1449
`(Fed. Cir. 2000) (holding “second baffle means”
`does not invoke 35 U.S.C. 112, sixth paragraph,
`because the word “baffle” itself imparts structure
`and the claim further recites the structure of the
`baffle); Rodime PLC v. Seagate Technology, Inc.,
`174 F.3d 1294, 1303–04, 50 USPQ2d 1429, 1435–36
`(Fed. Cir. 1999) (holding “positioning means for
`moving” does not invoke 35 U.S.C. 112, sixth
`paragraph, because the claim further provides a list
`of the structure underlying the means and the
`detailed recitation of the structure for performing
`the moving function removes this element from the
`purview of 35 U.S.C. 112, sixth paragraph); Cole
`v. Kimberly-Clark Corp., 102 F.3d 524, 531, 41
`USPQ2d 1001, 1006 (Fed. Cir. 1996) (holding
`“perforation means…for tearing” does not invoke
`35 U.S.C. 112, sixth paragraph, because the claim
`describes the structure supporting the tearing
`function (i.e., perforation)). In other situations, the
`Federal Circuit has come to a different conclusion.
`See Unidynamics Corp. v. Automatic Prod. Int’l,
`157 F.3d 1311, 1319, 48 USPQ2d 1099, 1104 (Fed.
`Cir. 1998) (holding that “spring means” invokes
`35 U.S.C. 112, sixth paragraph).
`
`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 (1) 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 (2) 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. For
`example, although a generic placeholder like
`“mechanism” standing alone may invoke 35 U.S.C.
`112(f) 35 U.S.C. 112, sixth paragraph when coupled
`with a function, it will not invoke 35 U.S.C. 112(f)
`or pre-AIA 35 U.S.C. 112, sixth paragraph when it
`is preceded by a structural modifier (e.g., “detent
`mechanism”). Greenberg, 91 F.3d at 1583, 39
`
`Rev. 07.2015, November 2015
`
`2100-316