35 U.S.C. § 112
`Supplementary Examination Guidelines
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`Office of Patent Legal Administration
`United States Patent and Trademark Office
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`Supplementary Examination Guidelines
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`Office of Patent Legal Administration
`United States Patent and Trademark Office
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`35 U.S.C. § 112
`Supplementary Examination Guidelines
`
`• The Supplementary §112 Examination Guidelines were
`published in the Federal Register on February 9, 2011.
`
`• See Supplementary Examination Guidelines for Determining
`Compliance with 35 U.S.C. § 112 and for Treatment of Related
`Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011), available
`at http://www.uspto.gov/patents/law/notices/2011.jsp.
`
`• The corresponding Memoranda to the Examining Corps is available
`at http://www.uspto.gov/patents/law/exam/memoranda.jsp.
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`35 U.S.C. § 112
`Supplementary Examination Guidelines
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`• Purpose: Assist the Examining Corps in evaluating
`claims for compliance with §112, ¶2, and other
`patentability requirements related to enhancing the
`quality of patents.
`
`• Goal: Ensure that the scope of any patent rights
`granted is clear and supported by the invention
`disclosed to the public.
`
`– Section 112 is a valuable tool for examiners to
`accomplish this goal.
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`35 U.S.C. § 112
`Supplementary Examination Guidelines
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`The guidelines include the following:
`• Guidance for determining, under the broadest reasonable
`interpretation, whether the metes and bounds of the claimed
`invention are clear under §112, ¶2;
`
`•
`
`Instructions for rejecting non-compliant dependent claims under
`§112, ¶4 as unpatentable rather than objecting to the claims;
`
`• Factors to be considered when examining functional claim
`language to determine whether the claim scope is clear and
`precise under §112, ¶2;
`
`• Guidance for determining whether a claim limitation invokes §112,
`¶6 and whether a §112, ¶6 limitation complies with §112, ¶2;
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`35 U.S.C. § 112
`Supplementary Examination Guidelines
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`The guidelines include the following (cont.):
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`• Supplemental information for examining computer-implemented
`functional claim limitations with respect to written description and
`enablement requirements under §112, ¶1, and rejections under
`§§102 and 103;
`
`• Guidance for examining Markush claims with respect to the
`definiteness requirement under §112, ¶2, and a judicially based
`rejection as an “improper Markush grouping”; and
`
`• Compact prosecution procedures for resolving §112 issues.
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`Supplementary §112 Examination Guidelines
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`Step I. Interpreting the Claims –
`Broadest Reasonable Interpretation
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`Supplementary §112 Examination Guidelines
`Broadest Reasonable Interpretation
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`Give the claim the broadest reasonable interpretation
`(BRI) consistent with the specification as it would be
`interpreted by one of ordinary skill in the art.
`
`• Why do we apply BRI?
`– An application claim can be amended and interpreted during
`prosecution to make the meaning clear, but a patent claim is fixed
`and, when possible, will be interpreted in favor of validity.
`
`– As a result, the USPTO uses a lower threshold of ambiguity for
`definiteness.
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`Supplementary §112 Examination Guidelines
`Broadest Reasonable Interpretation (cont.)
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`• Why does it matter?
`– Giving a claim its BRI during prosecution will reduce the
`possibility that the claim, once issued, will be interpreted
`more broadly than is justified.
`
`• What does BRI mean?
`– The interpretation should be based on what is
`reasonable, not what is possible, and should be viewed
`in light of the specification and how one of ordinary skill
`in the art would interpret it.
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`Supplementary §112 Examination Guidelines
`Broadest Reasonable Interpretation (cont.)
`
`• Where do you start?
`– Claim terms should be given their plain meaning unless
`the application clearly sets forth a different definition in
`the specification as filed.
`
`• Plain meaning means the ordinary and customary
`meaning given to that term by those of ordinary skill in
`the art at the time of the invention.
`• Sources of the meaning include words of the claims,
`specification, drawings, and prior art.
`• See also MPEP § 2111.
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`Supplementary §112 Examination Guidelines
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`Step II. Determining Whether Claim
`Language Is Definite
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`Supplementary §112 Examination Guidelines
`Determining Whether Claim Language Is Definite
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`• How is it determined whether a claim clearly and
`precisely defines the patent rights?
`
`– Use the definiteness requirement of §112, ¶2.
`
`• This is a statutory requirement and cannot be waived.
`
`• An indefinite claim is not patentable, and therefore it
`must be rejected under §112, ¶2.
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`Supplementary §112 Examination Guidelines
`Determining Whether Claim Language Is Definite (cont.)
`
`• The test is whether, under the BRI, the metes
`and bounds of the claimed invention are clear.
`
`– Can you draw the boundary between what is covered
`by the claim and what is not covered?
`
`– A boundary cannot be drawn if there is more than
`one reasonable interpretation of what is covered.
`
`• This means that it is unclear as to where the
`boundary should be drawn.
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`Supplementary §112 Examination Guidelines
`Determining Whether Claim Language Is Definite (cont.)
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`• Do not confuse breadth with indefiniteness.
`
`– For example, a genus claim covering multiple species
`is broad, but not indefinite because of its breadth,
`which is otherwise clear.
`
`– However, a genus claim that can be interpreted in such
`a way that it is not clear which species are covered
`would be indefinite (e.g., there is more than one
`reasonable interpretation of which species are included
`in the claim).
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`Supplementary §112 Examination Guidelines
`Determining Whether Claim Language Is Definite (cont.)
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`Areas where questions of definiteness commonly arise:
`
`– Terms of degree
`– Subjective terms
`– Correspondence between specification and claims
`– Improper dependent claims
`– Functional claiming
`– Lack of corresponding structure for a §112, ¶6 limitation
`– Markush groups
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`Terms of Degree
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`Supplementary §112 Examination Guidelines
`Terms of Degree
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`• When a term of degree is used, there must be
`some standard for measuring that degree:
`
`– The specification should provide some standard for
`measuring that degree; or
`– There should be a standard that is recognized in the art
`for measuring the meaning of the term of degree.
`
`• Without a standard for measuring, the claim is
`indefinite because the boundaries cannot be
`determined.
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`Supplementary §112 Examination Guidelines
`Terms of Degree (cont.)
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`• An appropriate applicant response to an
`indefiniteness rejection based on a term of degree
`includes, for example:
`
`– Demonstrating that the specification provides examples
`or teachings that can be used to measure a degree
`even without a precise numerical measurement; or
`
`– Submitting a declaration under 37 CFR 1.132 showing
`examples that meet the claim limitation and examples
`that do not.
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`Subjective Terms
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`Supplementary §112 Examination Guidelines
`Subjective Terms
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`• Similar to a term of degree, a subjective term must be
`objectively measureable.
`
`• The specification should provide some objective standard
`for measuring the scope of the term.
`
`• Example: a claim recites a computer interface screen
`with an aesthetically pleasing look and feel.
`– The claim is indefinite because the term “aesthetically pleasing”
`depends solely on the subjective opinion of the person selecting
`the features to be included on the interface screen.
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`Supplementary §112 Examination Guidelines
`Subjective Terms (cont.)
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`• An appropriate applicant response to an
`indefiniteness rejection based on a subjective term
`includes, for example:
`– Evidence that the meaning of the term can be
`ascertained by one of ordinary skill in the art
`when reading the disclosure; or
`
`– An amendment to the claim to remove the
`subjective term.
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`Supplementary §112 Examination Guidelines
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`Claims Must Find Clear Support
`in the Specification
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`Supplementary §112 Examination Guidelines
`Clear Support in the Specification
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`• Correspondence between the specification and claims is
`required by 37 CFR 1.75(d)(1).
`– Claim terms must find clear support or antecedent basis in the
`specification so that the meaning of the terms can be ascertained
`by reference to the specification.
`
`• To meet §112, ¶2, the meaning of the terms must be
`readily discernable to a person of ordinary skill in the art.
`– The specification must provide guidance on the meaning of the
`terms (e.g., by using clearly equivalent terms).
`– The exact terms, however, are not required to be used in the
`specification.
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`Supplementary §112 Examination Guidelines
`Clear Support in the Specification (cont.)
`
`• If the claims do not find clear support in the
`specification, object to the specification.
`
`• If the claim terms have inconsistent or conflicting
`meaning with the specification, also reject the
`claim as indefinite under §112, ¶2.
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`Supplementary §112 Examination Guidelines
`Clear Support in the Specification (cont.)
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`• An appropriate applicant response to an objection
`based on lack of support in the specification
`and/or a rejection based on inconsistency
`between a claim term and the specification
`includes, for example:
`– An amendment to the specification to provide
`clear support or antecedent basis for the claim
`terms without introducing any new matter; or
`– An appropriate amendment to the claim.
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`Supplementary §112 Examination Guidelines
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`Rejections Under §112, ¶4 for
`Improper Dependent Claims
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`Supplementary §112 Examination Guidelines
`Improper Dependent Claims
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`• Under §112, ¶4, a dependent claim is statutorily required to:
`– Contain a reference to a previous claim in the same application, and
`– Specify a further limitation of the subject matter claimed.
`If it does not satisfy these requirements, the claim should be rejected
`under §112, ¶4, rather than being objected to, and then examined on its
`merits, as best understood.
`
`•
`
`• An appropriate applicant response to a rejection under §112, ¶4
`includes, for example:
`– Writing the claim in independent form;
`– Making an appropriate amendment to the dependent claim; or
`– Presenting a sufficient showing that the dependent claim complies
`with the statutory requirements.
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`Supplementary §112 Examination Guidelines
`Improper Dependent Claims
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`• An improper dependent claim includes, but is not limited to:
`1. A claim that omits an element from the independent claim.
`2. A claim that fails to add a limitation to the independent claim.
`
`• Example of an improper dependent claim:
`1. A pipe coupling comprising:
`an elongated cylinder and a nickel fitting secured to the cylinder.
`
`2. The pipe coupling of claim 1, wherein the fitting is metal.
`
`Claim 2 does not further limit claim 1 as metal is less limiting than
`nickel.
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`Supplementary §112 Examination Guidelines
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`Functional Claiming
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`Supplementary §112 Examination Guidelines
`Functional Claiming
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`• Functional claiming means the claim recites a feature using
`functional terms.
`– Reciting what the feature does rather than what the feature is.
`• Permissible when the scope is clear, or when means-plus-
`function format is used.
`In functional claiming (not in means-plus-function format),
`typically some structure will be recited followed by its
`function.
`– Example: A conical spout (structure) that allows several kernels of
`popped popcorn to pass through at the same time (function).
`
`•
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`Supplementary §112 Examination Guidelines
`Functional Claiming (cont.)
`
`• Problems associated with functional claiming:
`– When a claim merely recites a description of a problem
`to be solved or a function or result achieved by the
`invention, the boundaries of the claim scope may be
`unclear.
`– Unlimited functional claim limitations that extend to all
`means of resolving a problem may not be adequately
`supported by the written description or may not be
`commensurate in scope with the enabling disclosure.
`• When the claim does not recite the particular structure that
`accomplishes the function, all means of resolving the problem
`may be encompassed by the claim.
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`Supplementary §112 Examination Guidelines
`Functional Claiming (cont.)
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`–
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`• How to determine whether the functional limitation is
`definite?
`– Highly dependent on the applicant’s disclosure and the
`knowledge of those of ordinary skill in the art.
`Example: a claim reciting substantially pure carbon black in the
`form of commercially uniform, comparatively small, rounded
`smooth aggregates having a spongy or porous exterior.
`•
`Problems associated with the limitation:
`1. Commercially uniform only means the degree of uniformity
`that commercial buyers desire;
`2. Comparatively small has no meaning because no standard
`for comparison is given;
`3. Spongy and porous are synonyms and are not helpful in
`distinguishing the invention from the prior art.
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`Supplementary §112 Examination Guidelines
`Functional Claiming (cont.)
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`•
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`Factors useful for determining whether functional
`language is indefinite include:
`
`1. Whether there is a clear cut indication of the scope of the subject
`matter covered by the claim;
`
`2. Whether the language sets forth well-defined boundaries of the
`invention or only states a problem solved or a result obtained;
`and
`3. Whether one of ordinary skill in the art would know from the claim
`terms what structure or steps are encompassed by the claim.
`
`–
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`This list is not exhaustive.
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`Supplementary §112 Examination Guidelines
`Functional Claiming (cont.)
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`• Claims that mix apparatus and method limitations (such
`as functions or actions of a user) are indefinite when the
`boundaries are unclear.
`• Note recent example of In re Katz (Fed. Cir. 2011):
`– Claim: A system with an interface means for
`providing automated voice messages…to certain of
`said individual callers, wherein said certain of said
`individual callers digitally enter data.
`– The italicized claim limitation is not directed to the
`system, but rather to actions of the individual callers,
`which creates confusion as to when direct
`infringement occurs. The claim is indefinite.
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`Supplementary §112 Examination Guidelines
`Functional Claiming (cont.)
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`•
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`An appropriate applicant response to an indefiniteness
`rejection is to resolve the ambiguity by, for example:
`1. Using a quantitative metric (e.g., numeric limitation for a physical
`property) rather than a qualitative functional feature;
`
`2. Demonstrate that the specification provides a formula for
`calculating a property along with examples that meet the claim
`limitation and examples that do not;
`3. Demonstrate that the specification provides a general guideline
`and examples sufficient to teach a person skilled in the art when
`the claim limitation is satisfied; or
`
`4. Amend the claims to recite the particular structure that
`accomplishes the function.
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`Supplementary §112 Examination Guidelines
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`Means-Plus-Function Claim
`Limitations and
`Other Non-Structural Claim Terms
`that Invoke §112, ¶6
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6
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`For any claim limitation that recites a term and associated
`functional language:
`1. Determine, under BRI, whether the limitation invokes §112, ¶6;
`–
`This is a limitation-by-limitation analysis because §112, ¶6 applies to
`claim limitations, not claims in general.
`
`2.
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`3.
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`If the limitation invokes §112, ¶6,
`–
`Interpret the scope of the claim limitation to include the structure
`specifically disclosed in the specification for achieving the recited function
`and equivalents to that structure.
`
`If the specification does not disclose the structure (or sufficient
`structure) for achieving the recited function of the §112, ¶6 limitation,
`
`–
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`Reject the claim under §112, ¶2 because the claim scope is indefinite.
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`1. Determining whether the limitation invokes §112, ¶6.
`
`– Why is this important?
`
`•
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`•
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`The BRI of a limitation may change depending on whether
`§112, ¶6 is invoked.
`
`If §112, ¶6 is not invoked, the limitation must be interpreted
`under BRI in light of the specification and the prior art.
`
`– The scope of the claim is not limited to the specific
`structure disclosed in the specification.
`
`– Limitations cannot be imported to the claim from the
`specification.
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`•
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`For example, compare “filter” (not invoking §112, ¶6)
`with “means for separating particulates from a solution”
`(invoking §112, ¶6):
`
`–
`
`–
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`A “filter” may have a broader meaning and thus be anticipated
`by more prior art.
`
`A “means for separating particulates from a solution” may
`have a narrower meaning when the structure identified in the
`specification for separating particulates is one specific type of
`filter, and therefore can only be anticipated by that particular
`type of filter and its equivalents.
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`How to make this determination?
`A. Does the claim limitation use the phrase “means for” or
`“step for” coupled with functional language?
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`–
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`–
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`–
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`If it does, there is a strong presumption that §112, ¶6 is invoked.
`
`This presumption is overcome if the limitation includes the
`structure necessary to perform the recited function.
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`Thus, a claim limitation will invoke §112, ¶6, if:
`•
`It uses the phrase “means for” or “step for,”
`•
`The phrase is modified by functional language, and
`•
`The limitation does not include the structure necessary to
`perform the claimed function.
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`B. Does the claim limitation use a non-structural term (a
`term that is simply a substitute for “means for”) coupled
`with functional language?
`–
`For example, the following can be non-structural terms used in
`place of “means for”:
`– mechanism for
`– module for
`– device for
`– unit for
`– component for
`
`– element for
`– member for
`– apparatus for
`– machine for
`– system for
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`–
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`A claim limitation will invoke §112, ¶6, if:
`It uses a non-structural term without any structural modifier,
`•
`•
`The term is modified by functional language, and
`•
`The limitation does not include the structure necessary to
`perform the claimed function.
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`C. What if the claim limitation uses a structural modifier
`before the non-structural term?
`A limitation will not invoke §112, ¶6 if it uses a structural modifier
`–
`before the non-structural term.
`For example, “filter system for filtering particulates” will not invoke
`•
`§112, ¶6 because the non-structural term “system for” is preceded by
`the modifier “filter” which has a known structural meaning in the art.
`A limitation may invoke §112, ¶6, however, if it uses a non-
`structural modifier before the non-structural term.
`•
`For example, non-structural terms (e.g., “mechanism,” “element,” and
`“member”) preceded by modifiers that do not have any known structural
`meaning in the art may invoke §112, ¶6: “colorant selection
`mechanism,” “lever moving element,” and “moving link member.”
`
`–
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`D. What if the claim limitation uses a structural term
`coupled with functional language?
`– A limitation will not invoke §112, ¶6, if it uses a
`structural term.
`• For example, the following structural terms have
`been found not to invoke §112, ¶6:
`
`– circuit for
`– detent mechanism
`– digital detector for
`– reciprocating member
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`– connector assembly
`– perforation
`– sealingly connected joints
`– eyeglass hanger member
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`E. How to determine whether a claim term associated with
`the function is structural?
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`–
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`–
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`–
`
`Check whether the specification provides a description of the
`claim term that would be sufficient to inform one of ordinary
`skill in the art that the term denotes structure.
`Determine whether there is evidence that the term has
`achieved recognition as a noun denoting structure – look at
`general and subject matter specific dictionaries.
`Evaluate whether there is evidence in the prior art that the
`claim term has an art-recognized structure to perform the
`claimed function.
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`•
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`A structural term could be a term known in the art to be
`the name for the structure that performs the function.
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`–
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`–
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`–
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`The term is not required to denote a specific structure or a precise
`physical structure.
`It may cover a broad class of structures or identify the structures
`by their function.
`For example, the following structural terms (used as nouns) would
`typically not invoke §112, ¶6:
`– filter
`– screwdriver
`– brake
`– lock
`– clamp
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`2.
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`•
`
`Identifying the corresponding structure disclosed in
`the specification.
`• Why is this important?
`–
`Under the BRI, the claim scope of a limitation that invokes §112,
`¶6 is limited to the structure specifically disclosed in the
`specification for achieving the recited function and equivalents to
`that structure.
`How to identify the corresponding structure in the specification?
`–
`Review the specification from the point of view of one skilled in
`the art.
`Determine whether the specification clearly links the structure to
`the claimed function.
`Determine whether the disclosure contains sufficient structure to
`perform the claimed function.
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`–
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`–
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`•
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`For a computer-implemented limitation that invokes §112,
`¶6, determine whether the claimed function is either:
`– A function that can be achieved by any general
`purpose computer without special programming, or
`•
`Examples: “means for processing data,” “means for
`calculating a sum,” or “means for storing data”
`– A specific function that must be performed by a
`special purpose computer (i.e., cannot be performed
`by any general purpose computer),
`•
`Example: “control means to control displayed images, to
`define a set of predetermined arrangements for a given game
`depending on the player’s selections, and to pay a prize when
`a predetermined arrangement of symbols was displayed.”
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`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
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`•
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`•
`
`If the claimed function is a general computing function
`(e.g., “means for storing data”), a general purpose
`computer is usually sufficient for the corresponding
`structure.
`
`If the claimed function, however, is a specific function
`that is required to be performed by a special purpose
`computer,
`– The corresponding structure in the specification
`must be more than a mere reference to:
`•
`A general purpose computer, microprocessor, specialized
`computer, or an undefined component of a computer
`system, software, logic, code or black box element.
`
`04/08/2011
`
`4747
`
`47
`
`
`
`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
`
`•
`
`For a specific function, the corresponding structure must
`include an algorithm that transforms the general
`purpose computer to the special purpose computer
`programmed to perform the specific claimed function.
`–
`The algorithm may be expressed in any understandable terms,
`including mathematical formula, prose, flow chart, or other
`appropriate language or drawing that discloses the structure.
`It is not sufficient that one of ordinary skill in the art is capable of
`writing the software.
`There must be an explanation of how the computer or
`component performs the claimed function.
`
`–
`
`–
`
`–
`
`Sufficiency of explanation is determined in light of the level of
`ordinary skill in the art.
`
`04/08/2011
`
`4848
`
`48
`
`
`
`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
`
`• What if the specification discloses hardware, software, or
`a combination of both as the structure for the claimed
`function when §112, ¶6 is invoked?
`–
`The claim limitation is limited to the hardware or the combination
`of hardware and software.
`•
`This is because the corresponding structure of a means-plus-
`function limitation must be structural.
`It cannot read on software alone.
`
`•
`
`–
`
`If the specification discloses only software as the corresponding
`structure, the claim must be rejected as indefinite under §112, ¶2,
`as no corresponding structure has been identified.
`
`04/08/2011
`
`4949
`
`49
`
`
`
`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
`
`3.
`
`If the specification lacks the corresponding
`structure (or sufficient structure), the claim
`must be rejected as indefinite under §112, ¶2.
`
`– Why is this important?
`•
`If the specification does not disclose sufficient
`structure to perform the claimed function of a §112,
`¶6 limitation, the claim scope will not be clear, and
`will amount to pure functional claiming.
`• A bare statement that known techniques can be
`used is not sufficient to support a §112, ¶6
`limitation.
`
`04/08/2011
`
`5050
`
`50
`
`
`
`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
`
`• A rejection under §112, ¶2 is also appropriate:
`
`– When it is unclear whether a claim limitation
`invokes §112, ¶6; or
`
`– When the specification fails to clearly link the
`corresponding structure to the claimed function of
`a §112, ¶6 limitation.
`
`•
`
`A requirement for information under 37 CFR 1.105 may
`be made to require the identification of the corresponding
`structure.
`
`04/08/2011
`
`5151
`
`51
`
`
`
`Supplementary §112 Examination Guidelines
`Claim Limitations Under §112, ¶6 (cont.)
`
`• What if the preamble recites the phrase “means for”
`coupled with functional language?
`
`– A rejection under §112, ¶2 is appropriate if it is
`unclear whether the preamble is reciting a means-
`plus-function limitation or whether the preamble is
`merely stating an intended use.
`
`– However, if a structural or non-structural term is
`merely used with the word “for” in the preamble, the
`preamble should not be construed as a limitation
`invoking §112, ¶6.
`
`04/08/2011
`
`5252
`
`52
`
`
`
`Supplementary §112 Examination Guidelines
`
`Supplemental Information for
`Examining Computer-Implemented
`Functional Claim Limitations
`
`04/08/2011
`
`53
`
`53
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations
`
`• Computer-implemented functional claim limitations that
`are not limited to specific structure have unique
`examination issues.
`– After giving the limitation the BRI:
`1. Determine whether there is adequate written
`description.
`
`2. Determine whether the full scope of the limitation is
`enabled.
`
`3. Determine whether the limitation is patentable over
`the prior art under §§102 and 103.
`
`04/08/2011
`
`5454
`
`54
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`1. Determine whether there is adequate written
`description under §112, ¶1.
`– The written description requirement is separate and
`distinct from the enablement requirement.
`– The specification must:
`• Describe the claimed invention in a manner
`understandable to a person of ordinary skill in the
`art, and
`• Show that the inventor actually invented the
`claimed subject matter.
`
`04/08/2011
`
`5555
`
`55
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`• The written description requirement applies to
`all claims including original claims.
`– Although most original claims will satisfy the
`requirement, certain claims may not.
`– For example, the specification may fail to support:
`•
`A broad genus claim that covers all ways of performing the
`processes when the specification provides only one method
`and there is no evidence that a more generic way is
`contemplated; or
`A claim that defines the invention in functional language
`specifying a desired result when the specification does not
`sufficiently identify how the invention achieves the claimed
`function.
`
`•
`
`04/08/2011
`
`5656
`
`56
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`•
`
`Is there sufficient disclosure of hardware as well
`as software?
`–
`It is not enough that one skilled in the art could write a
`program to achieve the claimed function.
`– The specification must disclose the computer and the
`algorithm (e.g., the necessary steps and/or flowcharts)
`that perform the claimed function in sufficient detail
`such that one of ordinary skill can reasonably
`conclude that the inventor invented the claimed
`subject matter.
`• Make a rejection under §112, ¶1 based on lack of written
`description if the specification fails to provide such a
`disclosure.
`
`04/08/2011
`
`5757
`
`57
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`2. Determine whether the full scope of the limitation is
`enabled.
`– The specification must teach one of ordinary skill in the
`art how to make and use the claimed invention without
`undue experimentation.
`•
`In In re Wands, the court set forth the following factors for
`determining whether undue experimentation is needed:
`1. Breadth of the claims;
`2. Nature of the invention;
`3. State of the prior art;
`4. Level of one of ordinary skill;
`5. Level of predictability in the art;
`6. Amount of direction provided by the inventor;
`7. Existence of working examples; and
`8. Quantity of experimentation needed to make or use the
`invention based on the content of the disclosure.
`
`04/08/2011
`
`5858
`
`58
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`•
`
`• When the functional claim is not limited to a particular
`structure for performing the claimed function, the claim
`may cover all devices that perform the claimed function.
`This raises a concern regarding whether the scope of
`enablement provided by the disclosure is commensurate
`with the scope of protection sought by the claim.
`Applicant cannot rely on the knowledge of one skilled in
`the art to supply information on the novel aspects of the
`claimed invention.
`• Make a rejection under §112, ¶1 when the specification
`does not enable the full scope of the claims.
`– Must explain why undue experimentation would be required
`using the Wands factors.
`
`•
`
`04/08/2011
`
`5959
`
`59
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`• For example, in Auto. Techs. v. BMW of N. Am.:
`– The claim limitation was construed to include both
`mechanical side impact sensors and electronic side
`impact sensors for performing the function of initiating
`an occupant protection apparatus.
`– The specification, however, did not disclose any
`discussion of the details or circuitry involved in the
`electronic side impact senor, and thus, it failed to
`apprise one of ordinary skill how to make and use the
`electronic sensor.
`
`04/08/2011
`
`6060
`
`60
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`3. Determine whether the limitation is patentable
`over the prior art under §§102 and 103.
`– Functional claim language that is not limited to a
`specific structure covers all devices that are capable
`of performing the recited function.
`
`– Thus, a rejection under §§ 102 or 103 may be
`appropriate if the prior art discloses a device that can
`inherently perform the claimed function.
`
`04/08/2011
`
`6161
`
`61
`
`
`
`Supplementary §112 Examination Guidelines
`Computer-Implemented Functional Claim Limitations (cont.)
`
`•
`
`The claim term “computer” must be given the
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