35 USC 112(f)*: Broadest Reasonable Interpretation and Definiteness of § 112(f) Limitations

UNITED STATES PATENT AND TRADEMARK OFFICE

A full transcript of this presentation can be found under the “Notes” Tab.

35 USC 112(f)*:Broadest Reasonable Interpretation and

Definiteness of § 112(f) Limitations

* 35 USC 112, 6th paragraph, for cases filed before 9/16/2012


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• Ensuring that a claim limitation that invokes 35 U.S.C. § 112(f) is properly interpreted

• Statutorily authorized claiming technique (“means-(or step-)plus-function” limitations)

• Invoking § 112(f) permits an applicant to claim an element using purely functional language, but the interpretation is limited to the description in the specification and equivalents

• Ensuring that a § 112(f) limitation is definite and making a § 112(b) rejection when appropriate

Goal


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• § 112(f): An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

• Use the three-prong analysis in MPEP 2181 to determine whether the claim limitation invokes § 112(f)

• The word “means” in a product claim may be substituted by a term that serves as a generic placeholder and still invoke § 112(f)

• The words “step for” in a process claim are required to invoke § 112(f) since most method steps recite “acts” and rarely invoke § 112(f)

Statutory Basis


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• Use of the term “means” with functional language establishes a presumption that applicant intends to invoke § 112(f)

• Can be rebutted by reciting structure or material in the claim limitation that performs the function

• Conversely, absence of the term “means” with functional language establishes a presumption that applicant does not intend to invoke § 112(f)

• Can be rebutted by using a generic placeholder (as a substitute for “means”) coupled to a function

§ 112(f) Rebuttable Presumptions


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• Establish the presumptions on the record by stating them in the first applicable Office action, even if the presumptions are rebutted

• Use Form Paragraph 7.30.04 and provide additional explanation when needed

• Applicant can respond to the interpretation

• Provides public notice as to how the claim was interpreted during examination

• Assists in post-grant proceedings and court actions

Make the Record Clear


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• All claims under examination are given the Broadest Reasonable Interpretation (BRI)

• Using the BRI will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified in view of the prior art

• Explanation of the examiner’s BRI made on the record will assist the applicant in making an effective response to a rejection

• Such explanation may be used later to inform the public as to the scope of the claim and to assist in post-grant and court proceedings

Construing a § 112(f) Limitation


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• Typically, under the BRI, the claim language is construed in accordance with its plain meaning in light of the specification as it would be understood by one of ordinary skill in the art

• The specification is used to interpret the meaning of the claim terms - not to implicitly add limitations that do not have express basis in the claim

• A claim would not be limited to the preferred embodiment unless those limitations are positively recited in the claim

BRI of Claims that Do Not Invoke § 112(f)


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• 35 U.S.C. 112(f) imposes limits on the BRI

• The BRI under § 112(f) is restricted to the corresponding structure, material, or acts described in the specification and equivalents thereof

• § 112(f) is a claiming technique that allows applicants to use purely functional terms in their claims in exchange for relying on the structure, material or act that performs the function described in the supporting specification

BRI of Claims that Invoke § 112(f)


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• Limitation that does not invoke § 112(f)

BRI = [plain meaning of the claim language]

Details from the specification are not considered part of the claim limitation

• Limitation that does invoke § 112(f)

BRI = [corresponding structure, material, or acts disclosed in the specification, and equivalents, for performing the recited function]

The corresponding specification is considered to be part of the claim limitation

Comparison of BRI


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• What qualifies as “corresponding” structure or material?

• The structure or material that is described in the specification as performing the recited function

• The statute identifies the “specification” – this is interpreted to mean the written description, including the drawings.

• This is also called the corresponding “disclosure” - meaning the description in the specification

• Adequate disclosure in the specification is required for the claim to be definite under § 112(b) because the specification forms part of the § 112(f) claim limitation

Determining Corresponding Structure, Material (or Acts)


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• Corresponding Structure or Material:

• Must be disclosed or described in a way that one of ordinary skill in the art will understand what structure or material the inventor has identified to perform the recited function

• The structure or material must be sufficient to perform the entire function recited in the claim limitation

• The structure or material must be clearly linked to the function in the written description

Determining Corresponding Structure, Material (or Acts)


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• Corresponding structure or material is absent when:

• The specification merely repeats the function without any structure to perform the function; or

• Designates a “black box” to perform the function

Inadequate Disclosure - Absent


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• Corresponding structure or material is not sufficient to perform the entire function when:

• Functions A and B are claimed, but the corresponding structure is only capable of performing function A; or

• The identified structure cannot perform function A without additional structure

• For example, a function performed by a programmed computer requires both the computer and the algorithm that causes the computer to perform the function

Inadequate Disclosure - Insufficient


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• Corresponding structure or material is not linked to the claimed function when:

• Structure that could perform the function is present in the specification, but is linked to a different function or not connected to that function in any way; or

• Structure that could inherently perform the function is present in the specification, but is not described as performing the function

Inadequate Disclosure – No Linkage


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• Result of an inadequate corresponding disclosure for § 112(f) limitation:

• The claim limitation becomes an unbounded purely functional limitation

• No limits imposed by structure, material or acts

• Covers all ways of performing a function – known and unknown

• Indefinite under 35 U.S.C. 112(b) (second paragraph, pre-AIA) because claim boundaries are unknown

Inadequate Disclosure - Result


A claim including a means-plus-function element must be rejected as indefinite under § 112(b) when:A. § 112(f) has been invoked, and there is no disclosure of

corresponding structure that performs the claimed function (Form ¶ 7.34.18);

B. § 112(f) has been invoked, and the corresponding structure is insufficient to perform the claimed function (Form ¶ 7.34.18);

C. § 112(f) has been invoked, and there is no clear linkage disclosed between the corresponding structure and the claimed function (Form ¶ 7.34.19); or

D. It is unclear whether § 112(f) is being invoked (Form ¶ ¶ 7.34.16 or 17).

When the structure is only implicitly or inherently disclosed, object to the specification using Form ¶ 7.34.20.

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Making a Rejection


• Provide reasons to support an indefiniteness rejectiono Make the written record clear as to the specific

deficiencies, based on reasons A, B, C, or D (prior slide)

o Will provide the applicant an opportunity to directly address the issues

• Provide an explanation on the record regarding claim construction when needed to assist in clarifying positiono Identify on the record the corresponding structure for

a § 112(f) limitation04/19/2023 17

Provide Reasons for the Rejection


“means for rotatably securing an arm to a base and for locking the arm into an angled position”

• Specification A: The arm 10 is secured to the base 12 by a rotatable hinge assembly 14 that has a locking pawl 16 that locks the arm 10 into an angled position with respect to the base 12.

• Definite or Indefinite?

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Example 1: Claim Limitation



• Specification A: The arm 10 is secured to the base 12 by a rotatable hinge assembly 14 that has a locking pawl 16 that locks the arm 10 into an angled position with respect to the base 12.

Definite:

The hinge assembly 14 and locking pawl 16 are sufficient for performing both recited functions.

No rejection necessary

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Example 1: Claim Limitation - Definite



• Specification B: The arm 10 is secured to the base 12 by a rotatable hinge assembly 14.


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• Specification B: The arm 10 is secured to the base 12 by a rotatable hinge assembly 14.

Indefinite: The rotatable hinge assembly 14, as disclosed, is not

sufficient to perform the function of locking the arm into an angled position.

Make a rejection using FP 7.30.02 and 7.34.18

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Example 2: Claim Limitation - Indefinite


Sample Detailed Reasons using F¶ 7.34.18

Claim element “means for rotatably securing an arm to a base and for locking the arm into an angled position” is a limitation that invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. The rotatable hinge assembly 14 is identified as the structure for performing the function of rotatably securing the arm to the base, but it is not sufficient to perform the function of locking the arm into an angled position and no other structure for performing that function has been identified.

This form paragraph then lists responsive actions available to the applicant.

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Example 2: Claim Limitation - Rejection



• Specification C: The arm 10 is rotatably secured to the base 12 and locked into an angled position.


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• Specification C: The arm 10 is rotatably secured to the base 12 and locked into an angled position.

Indefinite: The specification only recites the function and does

not disclose any structure for performing either function.

Make a rejection using FP 7.30.02 and 7.34.18

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Example 3: Claim Limitation - Indefinite


Sample Detailed Reasons using FP 7.34.18

Claim element “means for rotatably securing an arm to a base and for locking the arm into an angled position” is a limitation that invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. The specification merely recites the function and does not identify any specific structure that rotatably secures the arm to the base or locks the arm into an angled position.

This form paragraph then lists responsive actions available to the applicant.

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Example 3: Claim Limitation - Rejection


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“Claim 4. A system, comprising:

means for recording an image.”


Example 4: Single Means Claims


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“Claim 4. A system, comprising:

means for recording an image.”

Indefinite:

Claim 4 should be rejected as indefinite under § 112(b).* FP 7.34.01.

Reason: § 112(f) only applies to claims for a combination (more than one element). A single element claim cannot rely on § 112(f) to incorporate the structure from the specification.

Without the benefit of the § 112(f) construction, the BRI of this claim element extends to all ways of recording an image, those known and unknown to the inventor, and amounts to pure functional claiming without boundaries.

*Note, claim 4 should also receive a § 112(a) rejection as failing to provide an enabling disclosure for all known and unknown ways of image recording.

Example 4: Single Means Claims - Indefinite


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• A showing by applicant that one of ordinary skill in the art could find a way to perform the function of a § 112(f) limitation does not satisfy the § 112(b) requirement for disclosure of corresponding structure

• The purpose of § 112(f) is to ensure that the supporting disclosure imposes boundaries on the purely functional language used in a means-plus-function claim limitation

• An appropriate response to a rejection under § 112(b) would be to:

• Identify the structure described in the specification that performs the claimed function, or

• Amend the claim to recite the structure that performs the function if possible, thus not invoking § 112(f)

Applicant Response to a § 112(b) Rejection Based on Inadequate Disclosure


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• Finding a § 112(f) limitation indefinite for failure to disclose adequate structure in the specification signals a lack of written description under § 112(a) for that limitation

• The inventor must provide an adequate written description of the claim limitations to show possession of the invention under § 112(a)

• The description can be accomplished with words, structures, figures, diagrams, and formulas, for example

• Indefiniteness rejection should be accompanied by a rejection for lack of written description under § 112(a)

Issues Relating to § 112(a) – “Indefinite” Signals Lack of “Written Description”


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• The BRI of a § 112(f) limitation also covers “equivalents” to the structure, material, and acts linked to the function

• Prior art that discloses the same structure identified in the specification as performing the function and equivalents to the identified structure will anticipate the claim limitation

• A prior art structure that is not an equivalent to the identified structure may still be appropriate for consideration with respect to an obviousness rejection

Determining Equivalents


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• An equivalent must perform the identical function specified in the claim• Applicant is not required to explain the full range of

equivalents

• However, if applicant chooses to specify equivalents, the BRI will be limited to those specified

• Equivalence is determined based on what one of ordinary skill in the art would consider a functional equivalent to the structure(s) described in the specification as performing the claimed function

• Courts have used various factors to establish equivalence (see next slide)

Determining Equivalents


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• If equivalents are not defined, the range of functional equivalents in the prior art can be identified using any one of these factors:

• The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification;

• A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification; or

• There are insubstantial differences between the prior art element and the corresponding element disclosed in the specification

Evaluating Equivalents


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• Examiner must make a prima facie case of equivalence - applicant can respond with proof of nonequivalence, such as:

(A) Teachings in the specification that particular prior art is not equivalent;

(B) Teachings in the prior art reference itself that may tend to show nonequivalence; or

(C) Rule 132 affidavit evidence of facts tending to show nonequivalence

If nonequivalence is shown, obviousness should be considered

Nonequivalence


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“Claim 5. A recording system, comprising:

a base; and

a camera mounted to the base for recording images.”

The specification describes the camera as a digital video camera that records images for broadcasting.

• Is the BRI limited based on specified equivalents?

Example 5


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a base; and

a camera mounted to the base for recording images.”

The specification describes the camera as a digital video camera that records images for broadcasting.

The BRI of the camera limitation covers all cameras known to those of ordinary skill in the art that can be mounted to a base and record images. The claim does not impose any other limits on the camera. The BRI is not limited to the disclosed preferred embodiment.

• Any type of camera that can be mounted to a base and record images would anticipate this limitation

Example 5 – Not Limited


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a base; and

means for recording images mounted to the base.”

The specification identifies a digital video camera for recording and storing images that is remotely operable. The preferred embodiment is a pan tilt zoom camera with recording ability (which is a typical surveillance camera), and no equivalents are specifically defined.

• Is the BRI limited based on specified equivalents?

Example 6


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a base; and

means for recording images mounted to the base.”

The specification identifies a digital video camera for recording and storing images that is remotely operable. The preferred embodiment is a pan tilt zoom camera with recording ability (which is a typical surveillance camera), and no equivalents are specifically defined.

• The BRI of the “means for recording images” is limited to a digital video camera that records and stores images and is remotely operable and any equivalent devices recognized by those of ordinary skill in the art

• If a closed list of equivalents was defined in the specification, equivalent structures would be limited to the defined list

• No defined list or an open ended list of equivalents would sweep in any equivalent devices recognized by those of ordinary skill in the art

Example 6 - Limited


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Anticipatory prior art would include:

• A pan tilt zoom camera with recording ability that is remotely operable (the disclosed structure) and equivalents to digital video cameras that perform the same function of recording and storing images and are remotely operable

• One way that functional equivalence can be shown is by identifying:

• A device that performs the identical function specified in the claim (recording and storing images) in substantially the same way (being remotely operable to record and store images), and produces substantially the same results (digital video) as the corresponding element disclosed in the specification (pan tilt zoom camera)

• A remotely operable digital camcorder would be an equivalent

• A webcam that streams live video feed having no storage capability or remote operability would not be an equivalent

Example 6 - continued


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• If a rejection is made using an equivalent, the Office action should identify the structure as an equivalent

• Example: Claim 6 is rejected under 35 U.S.C. 102(b) (pre-AIA) as being anticipated by prior art reference Miller that discloses a digital camcorder 10, which is an equivalent to the disclosed pan tilt zoom camera because it performs the same function in substantially the same way and produces substantially the same result

• Applicant can rebut, for example by identifying teachings in the reference that show nonequivalence, such as the camcorder being unable to perform the claimed function

• If nonequivalence is shown, consider obviousness

Example 6 - continued


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• Section 112(f) is a statutorily authorized claiming technique that permits functional claiming with certain restrictions

• The BRI of a § 112(f) claim limitation is limited to the structure, material or act, and their equivalents, described in the specification that performs the claimed function

• Failure to describe the structure, material or act renders the claim indefinite under § 112(b) because the supporting disclosure in the specification defines the boundaries of a § 112(f) claim limitation

• Establish on the record whether § 112(f) is invoked so that the claim interpretation used during examination is clear and the boundaries of coverage are defined

Summary

35 USC 112(f)*: Broadest Reasonable Interpretation and Definiteness of § 112(f) Limitations

Documents

Transcript of 35 USC 112(f)*: Broadest Reasonable Interpretation and Definiteness of § 112(f) Limitations