Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112, 57-63 [2018-28283]
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nonetheless be treated as reciting an
abstract idea (‘‘tentative abstract idea’’),
the examiner should evaluate whether
the claim as a whole integrates the
recited tentative abstract idea into a
practical application as explained in
Section III.A.2. If the claim as a whole
integrates the recited tentative abstract
idea into a practical application, the
claim is not directed to a judicial
exception (Step 2A: NO) and is eligible
(thus concluding the eligibility
analysis). If the claim as a whole does
not integrate the recited tentative
abstract idea into a practical
application, then the examiner should
evaluate the additional elements
individually and in combination to
determine whether they provide an
inventive concept as explained in
Section III.B. If an additional element or
combination of additional elements
provides an inventive concept as
explained in Section III.B (Step 2B:
YES), the claim is eligible (thus
concluding the eligibility analysis). If
the additional element or combination
of additional elements does not provide
an inventive concept as explained in
Section III.B (Step 2B: NO), the
examiner should bring the application
to the attention of the Technology
Center Director. Any rejection in which
a claim limitation, which does not fall
within the enumerated abstract ideas
(tentative abstract idea), is nonetheless
treated as reciting an abstract idea must
be approved by the Technology Center
Director (which approval will be
indicated in the file record of the
application), and must provide a
justification 41 for why such claim
limitation is being treated as reciting an
abstract idea.42
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D. Compact Prosecution
Regardless of whether a rejection
under 35 U.S.C. 101 is made, a complete
examination should be made for every
claim under each of the other
patentability requirements: 35 U.S.C.
102, 103, 112, and 101 (utility,
inventorship and double patenting) and
non-statutory double patenting.43
Compact prosecution, however, does
not mandate that the patentability
41 Such justification may include, for example, an
explanation of why the element contains subject
matter that, per se, invokes eligibility concerns
similar to those expressed by the Supreme Court
with regard to the judicial exceptions. See supra
note 5.
42 Similarly, in the rare circumstance in which a
panel of administrative patent judges (or panel
majority) believes that a claim reciting a tentative
abstract idea should be treated as reciting an
abstract idea, the matter should be brought to the
attention of the PTAB leadership by a written
request for clearance.
43 See MPEP 2103 et seq. and 2106(III).
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requirements be analyzed in any
particular order.
Dated: December 20, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2018–28282 Filed 1–4–19; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
[Docket No. PTO–P–2018–0059]
Examining Computer-Implemented
Functional Claim Limitations for
Compliance With 35 U.S.C. 112
United States Patent and
Trademark Office, Commerce.
ACTION: Examination guidance; request
for comments.
AGENCY:
This guidance will assist
United States Patent and Trademark
Office (USPTO) personnel in the
examination of claims in patent
applications that contain functional
language, particularly patent
applications where functional language
is used to claim computer-implemented
inventions. Part I of this guidance
addresses issues related to the
examination of computer-implemented
functional claims having means-plusfunction limitations. Part II of this
guidance addresses written description
and enablement issues related to the
examination of computer-implemented
functional claims that recite only the
idea of a solution or outcome to a
problem but fail to recite details of how
the solution or outcome is
accomplished.
SUMMARY:
DATES:
Applicable Date: The ComputerImplemented Functional Claim
Limitations Guidance is effective on
January 7, 2019. The ComputerImplemented Functional Claim
Limitations Guidance applies to all
applications, and to all patents resulting
from applications, filed before, on or
after January 7, 2019.
Comment Deadline Date: Written
comments must be received on or before
March 8, 2019.
ADDRESSES: Comments must be sent by
electronic mail message over the
internet addressed to:
112Guidance2019@uspto.gov.
Electronic comments submitted in
plain text are preferred, but also may be
submitted in ADOBE® portable
document format or MICROSOFT
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WORD® format. Comments not
submitted electronically should be
submitted on paper in a format that
facilitates convenient digital scanning
into ADOBE® portable document
format. The comments will be available
for viewing via the USPTO’s internet
website (https://www.uspto.gov). Because
comments will be made available for
public inspection, information that the
submitter does not desire to make
public, such as an address or phone
number, should not be included in the
comments.
FOR FURTHER INFORMATION CONTACT:
Nicole D. Haines, Senior Legal Advisor,
at 571–272–7717 or Jeffrey R. West,
Senior Legal Advisor, at 571–272–2226,
both with the Office of Patent Legal
Administration.
SUPPLEMENTARY INFORMATION: The patent
examination process must ensure that:
(1) The claims of an application have
proper written description and
enablement support under 35 U.S.C.
112(a) 1 in the disclosure of the
application, and (2) functional
limitations (i.e., claim limitations that
define an element in terms of the
function it performs without reciting the
structure, materials, or acts that perform
the function) are properly treated as
means (or step) plus function
limitations under 35 U.S.C. 112(f), and
are sufficiently definite under 35 U.S.C.
112(b), as appropriate. These
requirements are particularly relevant to
computer-implemented functional
claims.
The U.S. Court of Appeals for the
Federal Circuit (‘‘Federal Circuit’’) has
recognized a problem with broad
functional claiming without adequate
structural support in the specification.
Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1349 (Fed. Cir. 2015) (en
banc) (overruling the Federal Circuit’s
previous application of a ‘‘strong’’
presumption that claim limitations
lacking the word ‘‘means’’ are not
subject to § 112(f) to address the
resulting ‘‘proliferation of functional
claiming untethered to [§ 112(f)] and
free of the strictures set forth in the
statute’’); Function Media, LLC v.
Google, Inc., 708 F.3d 1310, 1319 (Fed.
Cir. 2013) (‘‘ ‘Section [112(f)] is intended
1 Section 4 of the Leahy-Smith America Invents
Act (AIA) designated pre-AIA 35 U.S.C. 112, ¶ ¶ 1
through 6, as 35 U.S.C. 112(a) through (f), effective
as to applications filed on or after September 16,
2012. See Public Law 112–29, 4(c), 125 Stat. 284,
296 (2011). AIA 35 U.S.C. 112(a) and pre-AIA 35
U.S.C. 112, ¶ 1 are collectively referred to in this
notice as 35 U.S.C. 112(a); AIA 35 U.S.C. 112(b) and
pre-AIA 35 U.S.C. 112, ¶ 2 are collectively referred
to in this notice as 35 U.S.C. 112(b); and AIA 35
U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, ¶ 6 are
collectively referred to in this notice as 35 U.S.C.
112(f).
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to prevent . . . pure functional
claiming.’ ’’ (citing Aristocrat Techs.
Australia Pty Ltd. v. Int’l Game Tech.,
521 F.3d 1238, 1333 (Fed. Cir. 2008)));
Ariad Pharm., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1349 (Fed. Cir. 2010) (en
banc) (discussing the problem of
functional claims defining a genus that
‘‘simply claim a desired result . . .
without describing species that achieve
that result’’). In the context of another
statutory requirement, 35 U.S.C. 101,
the Federal Circuit has also criticized
improper functional claiming. Elec.
Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1351 (Fed. Cir. 2016)
(observing that ‘‘the claims do not go
beyond requiring the collection,
analysis, and display of available
information in a particular field, stating
those functions in general terms,
without limiting them to technical
means for performing the functions that
are arguably an advance over
conventional computer and network
technology’’); see also Intellectual
Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1327 (Fed. Cir. 2016) (Mayer,
J., concurring) (stating, ‘‘[s]oftware
patents typically . . . describe, in
intentionally vague and broad language,
a particular goal or objective [of the
software]’’). Problems with functional
claiming, i.e., when a claim is purely
functional in nature rather than reciting
with any specificity how the claimed
function is achieved, can be effectively
addressed using long-standing, wellunderstood principles under 35 U.S.C.
112. Thus, the USPTO is providing
further guidance on the application of
35 U.S.C. 112 requirements during
examination.
Part I of this guidance focuses on
claim interpretation under 35 U.S.C.
112(f) and compliance with the
definiteness requirement of 35 U.S.C.
112(b), for example as discussed in the
Federal Circuit decisions in Williamson,
792 F.3d 1339, and Aristocrat, 521 F.3d
1328. Part II of this guidance focuses on
the requirements of 35 U.S.C. 112(a)
relative to written description and
enablement, for example as discussed in
the Federal Circuit decision in
Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671 (Fed.
Cir. 2015). 2
2 As is existing practice, examiners may also issue
‘‘Requirements for Information’’ pursuant to 37 CFR
1.105. This notice does not affect current practice
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I. Review of Issues under 35 U.S.C.
112(f) and 112(b) Related to
Examination of Computer-Implemented
Functional Claim Limitations: In its en
banc decision in the Williamson case,
the Federal Circuit recognized that some
of its prior opinions established a
heightened bar to overcoming the
presumption that a limitation expressed
in functional language without using the
word ‘‘means’’ is not subject to 35
U.S.C. 112(f) and concluded that such a
heightened burden is unjustified.
Williamson, 792 F.3d at 1349
(explaining that characterizing the
presumption as strong ‘‘has shifted the
balance struck by Congress in passing
[35 U.S.C. 112(f)] and has resulted in a
proliferation of functional claiming
untethered to [§ 112(f)] and free of the
strictures set forth in the statute’’).
Instead,
[t]he 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. When a
claim term lacks the word ‘‘means,’’ the
presumption [that 35 U.S.C. 112(f) does not
apply] can be overcome and [§ 112(f)] will
apply if the challenger demonstrates that the
claim term fails to recite sufficiently definite
structure or else recites function without
reciting sufficient structure for performing
that function. The converse presumption
remains unaffected: use of the word ‘‘means’’
creates a presumption that § 112[f] applies.
Id. (internal citations and quotation
marks omitted).
A. Claim Interpretation: One of the
first steps in examining claims is
determining the broadest reasonable
interpretation (BRI) of the claim. In
determining the BRI, examiners should
establish the meaning of each claim
term consistent with the specification as
it would be interpreted by one of
ordinary skill in the art, including
identifying and construing functional
claim limitations. 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). Application of
35 U.S.C. 112(f) is driven by the claim
regarding ‘‘Requirements for Information,’’ which
remains a tool examiners can use to help resolve,
among other things, issues regarding compliance
with § 112 during examination. See, e.g., MPEP
704.10–14. For example, an examiner may request
information about written description support,
continuation in part support, issues related to
§ 112(f), or enablement issues, among other things.
See, e.g., MPEP 704.11(a)(K), (R), (S)(2)–(3).
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language, not by applicant’s intent or
mere statements to the contrary
included in the specification or made
during prosecution. Examiners will
apply 35 U.S.C. 112(f) to a claim
limitation if it meets the 3-prong
analysis set forth in the Manual of
Patent Examining Procedure (9th ed.
Rev. 08.2017, Jan. 2018) (referred to
herein as ‘‘MPEP’’), § 2181, subsection I.
At a high level, the 3-prong analysis
includes evaluating whether: The claim
limitation uses the term ‘‘means’’ (or
‘‘step’’) or a generic placeholder, the
term is modified by functional language,
and the term is not modified by
sufficient structure, material or acts for
performing the function.3
A claim limitation is presumed to
invoke 35 U.S.C. 112(f) when it
explicitly uses the term ‘‘means’’ and
includes functional language. The
presumption that 35 U.S.C. 112(f)
applies is overcome when the limitation
further includes the structure necessary
to perform the recited function. See
MPEP § 2181, subsection I. By contrast,
a claim limitation that does not use the
term ‘‘means’’ will trigger the
presumption that 35 U.S.C. 112(f) does
not apply. Even in the face of this
presumption, the examiner should
nonetheless consider whether the
presumption is overcome.
The USPTO’s examination practice
regarding the presumption that 35
U.S.C. 112(f) does not apply to a claim
limitation that does not use the term
‘‘means’’ is based on the Federal
Circuit’s standard set forth in
Williamson. The presumption that 35
U.S.C. 112(f) does not apply is overcome
when ‘‘the claim term fails to ‘recite
sufficiently definite structure’ or else
recites ‘function without reciting
3 The full text reads as follows: ‘‘[E]xaminers 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.’’ MPEP 2181,
subsection I.
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sufficient structure for performing that
function.’’’ MPEP § 2181, subsection I
(quoting Williamson, 792 F.3d at 1348).
Instead of using ‘‘means’’ in such cases,
a substitute term can act as a generic
placeholder for the term ‘‘means’’ where
that term would not be recognized by
one of ordinary skill in the art as being
sufficiently definite structure for
performing the claimed function. The
following are examples of non-structural
generic placeholders that may invoke 35
U.S.C. 112(f): ‘‘mechanism for,’’
‘‘module for,’’ ‘‘device for,’’ ‘‘unit for,’’
‘‘component for,’’ ‘‘element for,’’
‘‘member for,’’ ‘‘apparatus for,’’
‘‘machine for,’’ or ‘‘system for.’’ See,
e.g., MPEP § 2181, subsection I.A;
Welker Bearing Co., v. Ph.D., Inc., 550
F.3d 1090, 1096 (Fed. Cir. 2008); Mass.
Inst. of Tech. v. Abacus Software, 462
F.3d 1344, 1354 (Fed. Cir. 2006);
Personalized Media Commc’ns, LLC v.
Int’l Trade Comm’n, 161 F.3d 696, 704
(Fed. Cir. 1998); Mas-Hamilton Grp. v.
LaGard, Inc., 156 F.3d 1206, 1214–15
(Fed. Cir. 1998). This list is not
exhaustive, and similar generic
placeholders may invoke 35 U.S.C.
112(f). Note that there is no fixed list of
generic placeholders that always result
in 35 U.S.C. 112(f) interpretation, and
likewise there is no fixed list of words
that always avoid 35 U.S.C. 112(f)
interpretation. Every case will turn on
its own unique set of facts.
Even when a claim limitation uses the
term ‘‘means’’ or a generic placeholder
for the term ‘‘means,’’ a limitation will
not invoke 35 U.S.C. 112(f) if there is a
structural modifier that further
describes the term ‘‘means’’ or the
generic placeholder. Compare
Greenberg v. Ethicon Endo-Surgery, Inc.,
91 F.3d 1580, 1583 (Fed. Cir. 1996)
(concluding that the term ‘‘detent
mechanism’’ did not invoke pre-AIA 35
U.S.C. 112, sixth paragraph because the
modifier ‘‘detent’’ denotes a type of
structural device with a generally
understood meaning in the mechanical
arts), with Mass. Inst. of Tech., 462 F.3d
at 1354 (concluding that the term
‘‘colorant selection mechanism’’ did
invoke pre-AIA 35 U.S.C. 112, sixth
paragraph because the modifier
‘‘colorant selection’’ does not connote
sufficient structure to a person of
ordinary skill in the art). To determine
whether a word, term, or phrase
coupled with a function denotes
structure, examiners should check
whether: (1) The specification provides
a description sufficient to inform one of
ordinary skill in the art that the term
denotes structure; (2) general and
subject matter specific dictionaries
provide evidence that the term has
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achieved recognition as a noun denoting
structure; and (3) the prior art provides
evidence that the term has an artrecognized structure to perform the
claimed function. See MPEP § 2181,
subsection I, for more guidance on
generic placeholders.
At issue in Williamson was whether a
‘‘distributed learning control module’’
limitation in claims directed to a
distributed learning system should be
interpreted as a means-plus-function
limitation. See Williamson, 792 F.3d at
1347. The Federal Circuit concluded
that ‘‘the ‘distributed learning control
module’ limitation fails to recite
sufficiently definite structure and that
the presumption against means-plusfunction claiming is rebutted.’’ Id. at
1351. In support, the Federal Circuit
determined that: ‘‘the word ‘module’
does not provide any indication of
structure because it sets forth the same
black box recitation of structure for
providing the same specified function as
if the term ‘means’ had been used’’;
‘‘[t]he prefix ‘distributed learning
control’ does not impart structure into
the term ‘module’ ’’; and ‘‘the written
description fails to impart any structural
significance to the term.’’ Id. at 1350–51.
In view of Williamson, examiners
should apply the applicable
presumption and the 3-prong analysis to
interpret a computer-implemented
functional claim limitation in
accordance with 35 U.S.C. 112(f) as
appropriate, including determining if
the claim sets forth sufficient structure
for performing the recited function. A
determination that a claim is being
interpreted according to 35 U.S.C. 112(f)
should be expressly stated in the
examiner’s Office action. In response to
the Office action, if applicant does not
want to have the claim limitation
interpreted under 35 U.S.C. 112(f),
applicant may: (1) Present a sufficient
showing to establish that the claim
limitation recites sufficient structure to
perform the claimed function so as to
avoid interpretation under 35 U.S.C.
112(f); or (2) amend the claim limitation
in a way that avoids interpretation
under 35 U.S.C. 112(f) (e.g., by reciting
sufficient structure to perform the
claimed function).
The BRI of a claim limitation that is
subject to 35 U.S.C. 112(f), ‘‘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.’’ MPEP § 2181. Thus, if the claim
limitation is being interpreted under 35
U.S.C. 112(f), the specification must be
consulted to determine the
corresponding structure, material, or act
for performing the claimed function. See
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MPEP § 2181, subsection I, for more
guidance on interpreting claim
limitations that are subject to 35 U.S.C.
112(f). Generally, the BRI given to a
claim term that is not subject to 35
U.S.C. 112(f) is its plain meaning unless
limited by a special definition or
disavowal of claim scope set forth in the
specification which must be clear and
unmistakable (note that changing the
plain meaning of a claim term by setting
forth a special definition or disavowal of
claim scope is uncommon). MPEP
§ 2111.01, subsections I, IV. The plain
meaning is the ordinary and customary
meaning given to the term by those of
ordinary skill in the art at the time of
the effective filing date, evidenced by,
for example, the words of the claims
themselves, the specification, drawings,
and prior art. Id. See, MPEP 2111, et.
seq., for detailed guidance on the
application of the BRI during
examination.
B. Indefiniteness under 35 U.S.C.
112(b): For a computer-implemented 35
U.S.C. 112(f) claim limitation, the
specification must disclose an algorithm
for performing the claimed specific
computer function, or else the claim is
indefinite under 35 U.S.C. 112(b). See
Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1367 (Fed. Cir. 2008). In
cases ‘‘involving a special purpose
computer-implemented means-plusfunction limitation, ‘[the Federal
Circuit] has consistently required that
the structure disclosed in the
specification be more than simply a
general purpose computer or
microprocessor’ and that the
specification must disclose an algorithm
for performing the claimed function.’’
Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1312 (Fed. Cir. 2012) (quoting
Aristocrat, 521 F.3d at 1333). Thus, the
corresponding structure for performing
the specific computer function is not
simply a general purpose computer by
itself but a special purpose computer as
programmed to perform the disclosed
algorithm. In re Aoyama, 656 F.3d 1293,
1297 (Fed. Cir. 2011) (‘‘[W]hen the
disclosed structure is a computer
programmed to carry out an algorithm,
‘the disclosed structure is not the
general purpose computer, but rather
that special purpose computer
programmed to perform the disclosed
algorithm.’ ’’ (quoting WMS Gaming,
Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999))). An algorithm is
defined, for example, as ‘‘a finite
sequence of steps for solving a logical or
mathematical problem or performing a
task.’’ Microsoft Computer Dictionary
(5th ed., 2002). Applicant may ‘‘express
that algorithm in any understandable
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terms including as a mathematical
formula, in prose, or as a flow chart, or
in any other manner that provides
sufficient structure.’’ Finisar Corp. v.
DirecTV Grp., Inc., 523 F.3d 1323, 1340
(Fed. Cir. 2008) (internal citation
omitted).
Special purpose computerimplemented 35 U.S.C. 112(f) claim
limitations will be indefinite under 35
U.S.C. 112(b) when the specification
fails to disclose an algorithm to perform
the claimed function. For example, in
Advanced Ground Information Systems,
Inc. v. Life360, Inc., 830 F.3d 1341 (Fed.
Cir. 2016), the Federal Circuit
determined that the term ‘‘symbol
generator’’ is a computer-implemented
means-plus-function limitation and that
‘‘[t]he specifications of the patents-insuit do not disclose an operative
algorithm for the claim elements
reciting ‘symbol generator.’ ’’ Id. at
1348–49. The Federal Circuit upheld the
district court’s determination that the
term ‘‘symbol generator’’ is indefinite,
observing that ‘‘although the district
court recognized that the specification
describes, in general terms, that symbols
are generated based on the latitude and
longitude of the participants, it
nonetheless determined that the
specification fails to disclose an
algorithm or description as to how those
symbols are actually generated.’’ Id. at
1349 (internal quotation marks and
alterations omitted). See also,
Blackboard, Inc. v. Desire2Learn, Inc.,
574 F.3d 1371, 1382–83 (Fed. Cir. 2009)
(concluding that the description of a
server computer’s ‘‘access control
manager’’ software feature was
insufficient disclosure of corresponding
structure to support the computerimplemented ‘‘means for assigning’’
limitation because ‘‘what the patent
calls the ‘access control manager’ is
simply an abstraction that describes the
function of controlling access to course
materials . . . [b]ut how it does so is left
undisclosed.’’); Aristocrat, 521 F.3d at
1334–35 (explaining that ‘‘the [patent’s]
description of the embodiments is
simply a description of the outcome of
the claimed functions, not a description
of the structure, i.e., the computer
programmed to execute a particular
algorithm’’).
Moreover, the requirement for the
disclosure of an algorithm cannot be
avoided by arguing that one of ordinary
skill in the art is capable of writing
software to convert a general purpose
computer to a special purpose computer
to perform the claimed function. See
EON Corp. IP Holdings LLC v. AT&T
Mobility LLC, 785 F.3d 616, 623 (Fed.
Cir. 2015) (disagreeing ‘‘that a
microprocessor can serve as sufficient
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structure for a software function if a
person of ordinary skill in the art could
implement the software function[,]’’
noting that ‘‘we have repeatedly and
unequivocally rejected this argument: a
person of ordinary skill in the art plays
no role whatsoever in determining
whether an algorithm must be disclosed
as structure for a functional claim
element’’); Blackboard, 574 F.3d at 1385
(explaining that ‘‘[t]he fact that an
ordinarily skilled artisan might be able
to design a program to create an access
control list based on the system users’
predetermined roles goes to
enablement[,]’’ whereas ‘‘[t]he question
before us is whether the specification
contains a sufficiently precise
description of the ‘corresponding
structure’ to satisfy [pre-AIA] section
112, paragraph 6, not whether a person
of skill in the art could devise some
means to carry out the recited
function’’).
Special purpose computerimplemented 35 U.S.C. 112(f) claim
limitations are also indefinite under 35
U.S.C. 112(b) when the specification
discloses an algorithm but the algorithm
is not sufficient to perform the entire
claimed function(s). See Noah, 675 F.3d
at 1319 (holding that ‘‘[c]omputerimplemented means-plus-function
claims are indefinite unless the
specification discloses an algorithm to
perform the function associated with the
limitation[,]’’ and that ‘‘[w]hen the
specification discloses an algorithm that
only accomplishes one of multiple
identifiable functions performed by a
means-plus-function limitation, the
specification is treated as if it disclosed
no algorithm.’’). The sufficiency of the
algorithm is determined in view of what
one of ordinary skill in the art would
understand as sufficient to define the
structure and make the boundaries of
the claim understandable. For example,
in Williamson, the Federal Circuit found
that the term ‘‘distributed learning
control module’’ is a means-plusfunction limitation that performs three
specialized functions (i.e., ‘‘receiving,’’,
‘‘relaying,’’ and ‘‘coordinating’’), which
‘‘must be implemented in a special
purpose computer.’’ Williamson, 792
F.3d at 1351–52. The Federal Circuit
explained that ‘‘[w]here there are
multiple claimed functions, as we have
here, the [specification] must disclose
adequate corresponding structure to
perform all of the claimed functions.’’
Id. Yet the Federal Circuit determined
that the specification ‘‘fails to disclose
any structure corresponding to the
‘coordinating’ function.’’ Id. at 1354.
Specifically, the Federal Circuit found
no ‘‘disclosure of an algorithm
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corresponding to the claimed
‘coordinating’ function,’’ concluding
that the figures in the specification
relied upon by patentee as disclosing
the required algorithm, instead describe
‘‘a presenter display interface’’ and not
an algorithm corresponding to the
claimed ‘‘coordinating’’ function. Id. at
1353–54. Accordingly, the Federal
Circuit affirmed the district court’s
judgment that claims containing the
‘‘distributed learning control module’’
limitation are invalid for indefiniteness
under 35 U.S.C. 112(b). Id. at 1354.
Similarly, in Media Rights
Technologies, Inc. v. Capital One
Financial Corp., 800 F.3d 1366, 1374
(Fed. Cir. 2015), the Federal Circuit
determined that the term ‘‘compliance
mechanism’’ is a means-plus-function
limitation that performs four computerimplemented functions (i.e.,
‘‘controlling data output by diverting a
data pathway; monitoring the controlled
data pathway; managing an output path
by diverting a data pathway; and
stopping the play of media content’’).
The Federal Circuit determined ‘‘that
the specification fails to adequately
disclose the structure to perform all four
of [the ‘compliance mechanism’s’]
functions’’ and affirmed the district
court’s decision that the ‘‘compliance
mechanism’’ limitation is indefinite. Id.
at 1375. Specifically, the Federal Circuit
found that ‘‘the specification fails to
disclose an operative algorithm for both
the ‘controlling data output’ and
‘managing output path’ functions[,]’’
which ‘‘both require diverting a data
pathway[,]’’ because the recited C++
source code in the specification ‘‘only
returns various error messages’’ and
‘‘does not, accordingly, explain how to
perform the diverting function[.]’’ Id. at
1374–75. ‘‘Additionally, the
specification does not disclose sufficient
structure for the ‘monitoring’
function[,]’’ because the disclosed ‘‘set
of rules . . . which the ‘copyright
compliance mechanism’ applies to
monitor the data pathway to ensure
there is no unauthorized recording of
electronic media . . . provides no detail
about the rules themselves or how the
‘copyright compliance mechanism’
determines whether the rules are being
enforced.’’ Id. at 1375. See MPEP § 2181,
subsection II(B), for additional guidance
on evaluating description necessary to
support computer-implemented 35
U.S.C. 112(f) claim limitations.
A computer-implemented functional
claim may also be indefinite when the
3-prong analysis for determining
whether the claim limitation should be
interpreted under 35 U.S.C. 112(f) is
inconclusive because of ambiguous
words in the claim. After taking into
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consideration the language in the
claims, the specification, and how those
of ordinary skill in the art would
understand the language in the claims
in light of the disclosure, the examiner
should make a determination regarding
whether the words in the claim recite
sufficiently definite structure that
performs the claimed function. If the
applicant disagrees with the examiner’s
interpretation of the claim limitation,
the applicant has the opportunity
during the application process to
present arguments, and amend the claim
if needed, to clarify whether § 112(f)
applies.
When a claim containing a computerimplemented 35 U.S.C. 112(f) claim
limitation is found to be indefinite
under 35 U.S.C. 112(b) for failure to
disclose sufficient corresponding
structure (e.g., the computer and the
algorithm) in the specification that
performs the entire claimed function, it
will also lack written description under
35 U.S.C. 112(a). See MPEP § 2163.03,
subsection VI. Examiners should further
consider whether the disclosure
contains sufficient information
regarding the subject matter of the
claims as to enable one skilled in the
pertinent art to make and use the full
scope of the claimed invention in
compliance with the enablement
requirement of 35 U.S.C. 112(a). See
MPEP § 2161.01, subsection III and
MPEP § 2164.08.
II. Review of Issues under 35 U.S.C.
112(a) Related to Examination of
Computer-Implemented Functional
Claim Limitations: Even if a claim is not
construed as a means-plus-function
limitation under 35 U.S.C. 112(f),
computer-implemented functional claim
language must still be evaluated for
sufficient disclosure under the written
description and enablement
requirements of 35 U.S.C. 112(a). As
explained in further detail below, a
specification must describe the claimed
invention in sufficient detail (e.g., by
disclosure of an algorithm) to establish
that the applicant had possession of the
claimed invention as of the application
filing date. Additionally, any analysis of
whether a particular claim is supported
by the disclosure in an application
requires a determination of whether that
disclosure, when filed, contained
sufficient information regarding the
subject matter of the claims as to enable
one skilled in the pertinent art to make
and use the claimed invention. This
enablement requirement of 35 U.S.C.
112(a) is separate and distinct from the
written description requirement, Ariad,
598 F.3d at 1341, and serves the
purpose of ‘‘ensur[ing] that the
invention is communicated to the
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interested public in a meaningful way,’’
MPEP § 2164.
A. Written Description Requirement of
35 U.S.C. 112(a): At issue in Vasudevan
was whether the patent specification
provided sufficient written description
support for a limitation of the asserted
claims. Vasudevan, 782 F.3d at 681–83.
The Federal Circuit explained that
‘‘[t]he test for the sufficiency of the
written description ‘is whether the
disclosure of the application relied
upon reasonably conveys to those
skilled in the art that the inventor had
possession of the claimed subject matter
as of the filing date.’ ’’ Id. at 682
(quoting Ariad, 598 F.3d at 1351). The
Federal Circuit emphasized that ‘‘[t]he
written description requirement is not
met if the specification merely describes
a ‘desired result.’ ’’ Vasudevan, 782 F.3d
at 682 (quoting Ariad, 598 F.3d at 1349).
Thus, in applying this standard to the
computer-implemented functional claim
at issue, the Federal Circuit stated that
‘‘[t]he more telling question is whether
the specification shows possession by
the inventor of how [the claimed
function] is achieved.’’ Vasudevan, 782
F.3d at 683.
In order to satisfy the written
description requirement set forth in 35
U.S.C. 112(a), the specification must
describe the claimed invention in
sufficient detail such that one skilled in
the art can reasonably conclude that the
inventor had possession of the claimed
invention at the time of filing. For
instance, the specification must provide
a sufficient description of an invention,
not an indication of a result that one
might achieve. The level of detail
required to satisfy the written
description requirement varies
depending on the nature and scope of
the claims and on the complexity and
predictability of the relevant
technology. Information that is well
known in the art need not be described
in detail in the specification. However,
sufficient information must be provided
to show that the inventor had
possession of the invention as claimed.
See MPEP § 2163, subsection II(A)(2).
The analysis of whether the
specification complies with the written
description requirement calls for the
examiner to compare the scope of the
claim with the scope of the description
to determine whether applicant has
demonstrated possession of the claimed
invention. Id.; see also Reiffin v.
Microsoft Corp., 214 F.3d 1342, 1345
(Fed. Cir. 2000) (‘‘The purpose of [the
written description requirement] is to
ensure that the scope of the right to
exclude, as set forth in the claims, does
not overreach the scope of the inventor’s
contribution to the field of art as
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61
described in the patent specification’’);
LizardTech Inc. v. Earth Resource
Mapping Inc., 424 F.3d 1336, 1345 (Fed.
Cir. 2005) (‘‘Whether the flaw in the
specification is regarded as a failure to
demonstrate that the applicant
possessed the full scope of the invention
recited in [the claim] or a failure to
enable the full breadth of that claim, the
specification provides inadequate
support for the claim under [§ 112(a)]’’);
cf. id. (‘‘A claim will not be invalidated
on [§ ] 112 grounds simply because the
embodiments of the specification do not
contain examples explicitly covering the
full scope of the claim language.’’).
While ‘‘[t]here is no special rule for
supporting a genus by the disclosure of
a species,’’ the Federal Circuit has stated
that ‘‘[w]hether the genus is supported
vel non depends upon the state of the
art and the nature and breadth of the
genus.’’ Hynix Semiconductor Inc. v.
Rambus Inc., 645 F.3d 1336, 1352 (Fed.
Cir. 2011); id. (further explaining that
‘‘so long as disclosure of the species is
sufficient to convey to one skilled in the
art that the inventor possessed the
subject matter of the genus, the genus
will be supported by an adequate
written description.’’). See also Rivera v.
Int’l Trade Comm’n, 857 F.3d 1315,
1319–21 (Fed. Cir. 2017) (affirming the
Commission’s findings that ‘‘the
specification did not provide the
necessary written description support
for the full breadth of the asserted
claims,’’ where the claims were broadly
drawn to a ‘‘container . . . adapted to
hold brewing material’’ while the
specification disclosed only a ‘‘pod
adapter assembly’’ or ‘‘receptacle’’
designed to hold a ‘‘pod’’).
Computer-implemented inventions
are at times disclosed and claimed in
terms of their functionality. For
computer-implemented functional
claims, the determination of the
sufficiency of the disclosure will require
an inquiry into the sufficiency of both
the disclosed hardware and the
disclosed software (i.e., ‘‘how [the
claimed function] is achieved,’’
Vasudevan, 782 F.3d at 683), due to the
interrelationship and interdependence
of computer hardware and software.
When examining computerimplemented, software-related claims,
examiners should determine whether
the specification discloses the computer
and the algorithm(s) that achieve the
claimed function in sufficient detail that
one of ordinary skill in the art can
reasonably conclude that the inventor
possessed the claimed subject matter at
the time of filing. An algorithm is
defined, for example, as ‘‘a finite
sequence of steps for solving a logical or
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mathematical problem or performing a
task.’’ Microsoft Computer Dictionary
(5th ed., 2002). Applicant may ‘‘express
that algorithm in any understandable
terms including as a mathematical
formula, in prose, or as a flow chart, or
in any other manner that provides
sufficient structure.’’ Finisar, 523 F.3d
at 1340 (internal citation omitted). It is
not enough that one skilled in the art
could theoretically write a program to
achieve the claimed function, rather the
specification itself must explain how
the claimed function is achieved to
demonstrate that the applicant had
possession of it. See, e.g., Vasudevan,
782 F.3d at 682–83. If the specification
does not provide a disclosure of the
computer and algorithm(s) in sufficient
detail to demonstrate to one of ordinary
skill in the art that the inventor
possessed the invention that achieves
the claimed result, a rejection under 35
U.S.C. 112(a) for lack of written
description must be made. See MPEP
§ 2161.01, subsection I.
For example, in Vasudevan, the
Federal Circuit evaluated ‘‘whether the
specification shows possession by the
inventor of how accessing disparate
databases is achieved.’’ Vasudevan, 782
F.3d at 683. The defendant in district
court argued that ‘‘the specification does
not show that the inventor had
possession of the ability to access
‘disparate databases’ ’’ because ‘‘the
specification describes a result, but does
not show how to achieve the result.’’ Id.
at 682. On appeal, however, the Federal
Circuit found that expert testimony
given in the district court raises ‘‘a
genuine issue of material fact on
whether the specification shows how to
achieve the functionality of accessing
disparate databases.’’ Id. at 683. The
expert had opined that specific portions
of the specification explain ‘‘that
serialized files can be used to correlate
parameters from two databases,’’ and
that ‘‘those correlation parameters can
be used to identify data in one database
that is correlated to data in another.’’ Id.
The Federal Circuit ruled that this
expert opinion raises a genuine issue of
fact as to whether the inventor has
possession of an invention that achieved
the claimed result. Id. MPEP § 2161.01,
subsection I and MPEP § 2163 contain
additional information on determining
whether there is adequate written
description support for computerimplemented functional claim
limitations.
B. Enablement Requirement of 35
U.S.C. 112(a): At issue in Vasudevan
was also whether the patent
specification enabled a person of skill in
the art to make and use the claimed
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invention. Vasudevan, 782 F.3d at 683–
85. The Federal Circuit explained that
‘‘[a] claim is sufficiently enabled even if
‘a considerable amount of
experimentation’ is necessary, so long as
the experimentation ‘is merely routine,
or if the specification in question
provides a reasonable amount of
guidance with respect to the direction in
which the experimentation should
proceed.’ ’’ Id. at 684 (quoting In re
Wands, 858 F.2d 731, 737 (Fed. Cir.
1988)). ‘‘On the other hand, if ‘undue
experimentation’ is needed, the claims
are invalid.’’ Id. ‘‘In determining
whether experimentation is undue,
Wands lists a number of factors to
consider: ‘They include (1) the quantity
of experimentation necessary, (2) the
amount of direction or guidance
presented, (3) the presence or absence of
working examples, (4) the nature of the
invention, (5) the state of the prior art,
(6) the relative skill of those in the art,
(7) the predictability or unpredictability
of the art, and (8) the breadth of the
claims.’ ’’ Id.
To satisfy the enablement requirement
of 35 U.S.C. 112(a), the specification
must teach those skilled in the art how
to make and use the full scope of the
claimed invention without undue
experimentation. All questions of
enablement under 35 U.S.C. 112(a) are
evaluated against the claimed subject
matter with the focus of the examination
inquiry being whether everything
within the scope of the claim is enabled.
Accordingly, examiners should
determine what each claim recites and
what subject matter is encompassed by
the claim when the claim is considered
as a whole, not when its parts are
analyzed individually. See MPEP
§ 2161.01, subsection III, and MPEP
§ 2164.08.
Not everything necessary to practice
the invention need be disclosed. Trs. of
Bos. Univ. v. Everlight Elecs. Co., LTD.,
896 F.3d 1357, 1364 (Fed. Cir. 2018)
(explaining that while ‘‘the specification
must enable the full scope of the
claimed invention[,]’’ ‘‘[t]his is not to
say that the specification must expressly
spell out every possible iteration of
every claim.’’). For instance, ‘‘ ‘a
specification need not disclose what is
well known in the art.’ ’’ Id. (quoting
Genentech, Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1366 (Fed. Cir. 1997));
see also AK Steel Corp. v. Sollac &
Ugine, 344 F.3d 1234, 1244 (Fed. Cir.
2003). This is of particular importance
with respect to computer-implemented
inventions due to the high level of skill
in the art and the similarly high level of
predictability in generating programs to
achieve an intended result without
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undue experimentation. However,
applicant cannot rely on the knowledge
of one skilled in the art to supply
information that is required to enable
the novel aspect of the claimed
invention when the enabling knowledge
is in fact not known in the art. See
MPEP § 2161.01, subsection III, and
MPEP § 2164.08.
The Federal Circuit has repeatedly
held that the specification must teach
those skilled in the art how to make and
use the full scope of the claimed
invention without undue
experimentation. See Trs. of Bos. Univ.,
896 F.3d at 1364 (‘‘ ‘The scope of
enablement . . . is that which is
disclosed in the specification plus the
scope of what would be known to one
of ordinary skill in the art without
undue experimentation.’ ’’ (quoting
Nat’l Recovery Techs., Inc. v. Magnetic
Separation Sys., Inc., 166 F.3d 1190,
1196 (Fed. Cir. 1999))). For example, in
Sitrick v. Dreamworks, LLC, 516 F.3d
993 (Fed. Cir. 2008), the claims at issue
were directed to ‘‘integrating’’ or
‘‘substituting’’ a user’s audio signal or
visual image into a pre-existing video
game or movie. Id. at 995–97. While the
claims covered both video games and
movies, the specification only taught the
skilled artisan how to substitute and
integrate user images into video games.
Id. at 1000. The Federal Circuit held
that the specification ‘‘did not enable
the full scope of the asserted claims’’
because ‘‘one skilled in the art could not
take the disclosure in the specification
with respect to substitution or
integration of user images in video
games and substitute a user image for a
pre-existing character image in movies
without undue experimentation.’’ Id.
With respect to the breadth of a claim,
the relevant concern is whether the
scope of enablement provided to one
skilled in the art by the disclosure is
commensurate with the scope of
protection sought by the claims. In
making this determination, examiners
should consider (1) how broad the claim
is with respect to the disclosure and (2)
whether one skilled in the art could
make and use the entire scope of the
claimed invention without undue
experimentation. See MPEP § 2161.01,
subsection III, and MPEP § 2164.08. A
rejection for lack of enablement must be
made when the specification does not
enable the full scope of the claim. For
more information regarding the
enablement requirement, see MPEP
§§ 2164.01 through 2164.08.
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Dated: December 20, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2018–28283 Filed 1–4–19; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF ENERGY
Federal Energy Regulatory
Commission
[Docket No. ER19–665–000]
Dated: December 26, 2018.
Nathaniel J. Davis, Sr.,
Deputy Secretary.
khammond on DSK30JT082PROD with NOTICES
Supplemental Notice That Initial
Market-Based Rate Filing Includes
Request for Blanket Section 204
Authorization: FirstLight CT
Housatonic LLC
[FR Doc. 2018–28482 Filed 1–4–19; 8:45 am]
BILLING CODE 6717–01–P
This is a supplemental notice in the
above-referenced proceeding of
FirstLight CT Housatonic LLC’s
application for market-based rate
authority, with an accompanying rate
tariff, noting that such application
includes a request for blanket
authorization, under 18 CFR part 34, of
future issuances of securities and
assumptions of liability.
Any person desiring to intervene or to
protest should file with the Federal
Energy Regulatory Commission, 888
First Street NE, Washington, DC 20426,
in accordance with Rules 211 and 214
of the Commission’s Rules of Practice
and Procedure (18 CFR 385.211 and
385.214). Anyone filing a motion to
intervene or protest must serve a copy
of that document on the Applicant.
Notice is hereby given that the
deadline for filing protests with regard
to the applicant’s request for blanket
authorization, under 18 CFR part 34, of
future issuances of securities and
assumptions of liability, is January 15,
2019.
The Commission encourages
electronic submission of protests and
interventions in lieu of paper, using the
FERC Online links at https://
www.ferc.gov. To facilitate electronic
service, persons with internet access
who will eFile a document and/or be
listed as a contact for an intervenor
must create and validate an
eRegistration account using the
eRegistration link. Select the eFiling
link to log on and submit the
intervention or protests.
Persons unable to file electronically
should submit an original and 5 copies
of the intervention or protest to the
Federal Energy Regulatory Commission,
888 First Street NE, Washington, DC
20426.
The filings in the above-referenced
proceeding are accessible in the
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Commission’s eLibrary system by
clicking on the appropriate link in the
above list. They are also available for
electronic review in the Commission’s
Public Reference Room in Washington,
DC. There is an eSubscription link on
the website that enables subscribers to
receive email notification when a
document is added to a subscribed
docket(s). For assistance with any FERC
Online service, please email
FERCOnlineSupport@ferc.gov. or call
(866) 208–3676 (toll free). For TTY, call
(202) 502–8659.
DEPARTMENT OF ENERGY
Federal Energy Regulatory
Commission
[Docket No. ER19–667–000]
Supplemental Notice That Initial
Market-Based Rate Filing Includes
Request for Blanket Section 204
Authorization: FirstLight MA Hydro
LLC
This is a supplemental notice in the
above-referenced proceeding of
FirstLight MA Hydro LLC’s application
for market-based rate authority, with an
accompanying rate tariff, noting that
such application includes a request for
blanket authorization, under 18 CFR
part 34, of future issuances of securities
and assumptions of liability.
Any person desiring to intervene or to
protest should file with the Federal
Energy Regulatory Commission, 888
First Street, NE, Washington, DC 20426,
in accordance with Rules 211 and 214
of the Commission’s Rules of Practice
and Procedure (18 CFR 385.211 and
385.214). Anyone filing a motion to
intervene or protest must serve a copy
of that document on the Applicant.
Notice is hereby given that the
deadline for filing protests with regard
to the applicant’s request for blanket
authorization, under 18 CFR part 34, of
future issuances of securities and
assumptions of liability, is January 15,
2019.
The Commission encourages
electronic submission of protests and
interventions in lieu of paper, using the
FERC Online links at https://
www.ferc.gov. To facilitate electronic
service, persons with internet access
who will eFile a document and/or be
listed as a contact for an intervenor
must create and validate an
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63
eRegistration account using the
eRegistration link. Select the eFiling
link to log on and submit the
intervention or protests.
Persons unable to file electronically
should submit an original and 5 copies
of the intervention or protest to the
Federal Energy Regulatory Commission,
888 First Street NE, Washington, DC
20426.
The filings in the above-referenced
proceeding are accessible in the
Commission’s eLibrary system by
clicking on the appropriate link in the
above list. They are also available for
electronic review in the Commission’s
Public Reference Room in Washington,
DC. There is an eSubscription link on
the website that enables subscribers to
receive email notification when a
document is added to a subscribed
docket(s). For assistance with any FERC
Online service, please email
FERCOnlineSupport@ferc.gov. or call
(866) 208–3676 (toll free). For TTY, call
(202) 502–8659.
Dated: December 26, 2018.
Nathaniel J. Davis, Sr.,
Deputy Secretary.
[FR Doc. 2018–28473 Filed 1–4–19; 8:45 am]
BILLING CODE 6717–01–P
DEPARTMENT OF ENERGY
Federal Energy Regulatory
Commission
[Docket No. ER19–666–000]
Supplemental Notice That Initial
Market-Based Rate Filing Includes
Request for Blanket Section 204
Authorization: FirstLight CT Hydro LLC
This is a supplemental notice in the
above-referenced proceeding of
FirstLight CT Hydro LLC’s application
for market-based rate authority, with an
accompanying rate tariff, noting that
such application includes a request for
blanket authorization, under 18 CFR
part 34, of future issuances of securities
and assumptions of liability.
Any person desiring to intervene or to
protest should file with the Federal
Energy Regulatory Commission, 888
First Street NE, Washington, DC 20426,
in accordance with Rules 211 and 214
of the Commission’s Rules of Practice
and Procedure (18 CFR 385.211 and
385.214). Anyone filing a motion to
intervene or protest must serve a copy
of that document on the Applicant.
Notice is hereby given that the
deadline for filing protests with regard
to the applicant’s request for blanket
authorization, under 18 CFR part 34, of
future issuances of securities and
E:\FR\FM\07JAN1.SGM
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]]>Agencies
[Federal Register Volume 84, Number 4 (Monday, January 7, 2019)]
[Notices]
[Pages 57-63]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-28283]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2018-0059]
Examining Computer-Implemented Functional Claim Limitations for
Compliance With 35 U.S.C. 112
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Examination guidance; request for comments.
-----------------------------------------------------------------------
SUMMARY: This guidance will assist United States Patent and Trademark
Office (USPTO) personnel in the examination of claims in patent
applications that contain functional language, particularly patent
applications where functional language is used to claim computer-
implemented inventions. Part I of this guidance addresses issues
related to the examination of computer-implemented functional claims
having means-plus-function limitations. Part II of this guidance
addresses written description and enablement issues related to the
examination of computer-implemented functional claims that recite only
the idea of a solution or outcome to a problem but fail to recite
details of how the solution or outcome is accomplished.
DATES:
Applicable Date: The Computer-Implemented Functional Claim
Limitations Guidance is effective on January 7, 2019. The Computer-
Implemented Functional Claim Limitations Guidance applies to all
applications, and to all patents resulting from applications, filed
before, on or after January 7, 2019.
Comment Deadline Date: Written comments must be received on or
before March 8, 2019.
ADDRESSES: Comments must be sent by electronic mail message over the
internet addressed to: 112Guidance2019@uspto.gov.
Electronic comments submitted in plain text are preferred, but also
may be submitted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Comments not submitted electronically should be
submitted on paper in a format that facilitates convenient digital
scanning into ADOBE[supreg] portable document format. The comments will
be available for viewing via the USPTO's internet website (https://www.uspto.gov). Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Nicole D. Haines, Senior Legal
Advisor, at 571-272-7717 or Jeffrey R. West, Senior Legal Advisor, at
571-272-2226, both with the Office of Patent Legal Administration.
SUPPLEMENTARY INFORMATION: The patent examination process must ensure
that: (1) The claims of an application have proper written description
and enablement support under 35 U.S.C. 112(a) \1\ in the disclosure of
the application, and (2) functional limitations (i.e., claim
limitations that define an element in terms of the function it performs
without reciting the structure, materials, or acts that perform the
function) are properly treated as means (or step) plus function
limitations under 35 U.S.C. 112(f), and are sufficiently definite under
35 U.S.C. 112(b), as appropriate. These requirements are particularly
relevant to computer-implemented functional claims.
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\1\ Section 4 of the Leahy-Smith America Invents Act (AIA)
designated pre-AIA 35 U.S.C. 112, ] ] 1 through 6, as 35 U.S.C.
112(a) through (f), effective as to applications filed on or after
September 16, 2012. See Public Law 112-29, 4(c), 125 Stat. 284, 296
(2011). AIA 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, ] 1 are
collectively referred to in this notice as 35 U.S.C. 112(a); AIA 35
U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, ] 2 are collectively
referred to in this notice as 35 U.S.C. 112(b); and AIA 35 U.S.C.
112(f) and pre-AIA 35 U.S.C. 112, ] 6 are collectively referred to
in this notice as 35 U.S.C. 112(f).
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The U.S. Court of Appeals for the Federal Circuit (``Federal
Circuit'') has recognized a problem with broad functional claiming
without adequate structural support in the specification. Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc)
(overruling the Federal Circuit's previous application of a ``strong''
presumption that claim limitations lacking the word ``means'' are not
subject to Sec. 112(f) to address the resulting ``proliferation of
functional claiming untethered to [Sec. 112(f)] and free of the
strictures set forth in the statute''); Function Media, LLC v. Google,
Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013) (`` `Section [112(f)] is
intended
[[Page 58]]
to prevent . . . pure functional claiming.' '' (citing Aristocrat
Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1238, 1333
(Fed. Cir. 2008))); Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1349 (Fed. Cir. 2010) (en banc) (discussing the problem of
functional claims defining a genus that ``simply claim a desired result
. . . without describing species that achieve that result''). In the
context of another statutory requirement, 35 U.S.C. 101, the Federal
Circuit has also criticized improper functional claiming. Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016)
(observing that ``the claims do not go beyond requiring the collection,
analysis, and display of available information in a particular field,
stating those functions in general terms, without limiting them to
technical means for performing the functions that are arguably an
advance over conventional computer and network technology''); see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1327
(Fed. Cir. 2016) (Mayer, J., concurring) (stating, ``[s]oftware patents
typically . . . describe, in intentionally vague and broad language, a
particular goal or objective [of the software]''). Problems with
functional claiming, i.e., when a claim is purely functional in nature
rather than reciting with any specificity how the claimed function is
achieved, can be effectively addressed using long-standing, well-
understood principles under 35 U.S.C. 112. Thus, the USPTO is providing
further guidance on the application of 35 U.S.C. 112 requirements
during examination.
Part I of this guidance focuses on claim interpretation under 35
U.S.C. 112(f) and compliance with the definiteness requirement of 35
U.S.C. 112(b), for example as discussed in the Federal Circuit
decisions in Williamson, 792 F.3d 1339, and Aristocrat, 521 F.3d 1328.
Part II of this guidance focuses on the requirements of 35 U.S.C.
112(a) relative to written description and enablement, for example as
discussed in the Federal Circuit decision in Vasudevan Software, Inc.
v. MicroStrategy, Inc., 782 F.3d 671 (Fed. Cir. 2015). \2\
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\2\ As is existing practice, examiners may also issue
``Requirements for Information'' pursuant to 37 CFR 1.105. This
notice does not affect current practice regarding ``Requirements for
Information,'' which remains a tool examiners can use to help
resolve, among other things, issues regarding compliance with Sec.
112 during examination. See, e.g., MPEP 704.10-14. For example, an
examiner may request information about written description support,
continuation in part support, issues related to Sec. 112(f), or
enablement issues, among other things. See, e.g., MPEP 704.11(a)(K),
(R), (S)(2)-(3).
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I. Review of Issues under 35 U.S.C. 112(f) and 112(b) Related to
Examination of Computer-Implemented Functional Claim Limitations: In
its en banc decision in the Williamson case, the Federal Circuit
recognized that some of its prior opinions established a heightened bar
to overcoming the presumption that a limitation expressed in functional
language without using the word ``means'' is not subject to 35 U.S.C.
112(f) and concluded that such a heightened burden is unjustified.
Williamson, 792 F.3d at 1349 (explaining that characterizing the
presumption as strong ``has shifted the balance struck by Congress in
passing [35 U.S.C. 112(f)] and has resulted in a proliferation of
functional claiming untethered to [Sec. 112(f)] and free of the
strictures set forth in the statute''). Instead,
[t]he 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. When a claim term lacks the word
``means,'' the presumption [that 35 U.S.C. 112(f) does not apply]
can be overcome and [Sec. 112(f)] will apply if the challenger
demonstrates that the claim term fails to recite sufficiently
definite structure or else recites function without reciting
sufficient structure for performing that function. The converse
presumption remains unaffected: use of the word ``means'' creates a
presumption that Sec. 112[f] applies.
Id. (internal citations and quotation marks omitted).
A. Claim Interpretation: One of the first steps in examining claims
is determining the broadest reasonable interpretation (BRI) of the
claim. In determining the BRI, examiners should establish the meaning
of each claim term consistent with the specification as it would be
interpreted by one of ordinary skill in the art, including identifying
and construing functional claim limitations. 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).
Application of 35 U.S.C. 112(f) is driven by the claim language, not by
applicant's intent or mere statements to the contrary included in the
specification or made during prosecution. Examiners will apply 35
U.S.C. 112(f) to a claim limitation if it meets the 3-prong analysis
set forth in the Manual of Patent Examining Procedure (9th ed. Rev.
08.2017, Jan. 2018) (referred to herein as ``MPEP''), Sec. 2181,
subsection I. At a high level, the 3-prong analysis includes evaluating
whether: The claim limitation uses the term ``means'' (or ``step'') or
a generic placeholder, the term is modified by functional language, and
the term is not modified by sufficient structure, material or acts for
performing the function.\3\
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\3\ The full text reads as follows: ``[E]xaminers 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.'' MPEP 2181,
subsection I.
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A claim limitation is presumed to invoke 35 U.S.C. 112(f) when it
explicitly uses the term ``means'' and includes functional language.
The presumption that 35 U.S.C. 112(f) applies is overcome when the
limitation further includes the structure necessary to perform the
recited function. See MPEP Sec. 2181, subsection I. By contrast, a
claim limitation that does not use the term ``means'' will trigger the
presumption that 35 U.S.C. 112(f) does not apply. Even in the face of
this presumption, the examiner should nonetheless consider whether the
presumption is overcome.
The USPTO's examination practice regarding the presumption that 35
U.S.C. 112(f) does not apply to a claim limitation that does not use
the term ``means'' is based on the Federal Circuit's standard set forth
in Williamson. The presumption that 35 U.S.C. 112(f) does not apply is
overcome when ``the claim term fails to `recite sufficiently definite
structure' or else recites `function without reciting
[[Page 59]]
sufficient structure for performing that function.''' MPEP Sec. 2181,
subsection I (quoting Williamson, 792 F.3d at 1348). Instead of using
``means'' in such cases, a substitute term can act as a generic
placeholder for the term ``means'' where that term would not be
recognized by one of ordinary skill in the art as being sufficiently
definite structure for performing the claimed function. The following
are examples of non-structural generic placeholders that may invoke 35
U.S.C. 112(f): ``mechanism for,'' ``module for,'' ``device for,''
``unit for,'' ``component for,'' ``element for,'' ``member for,''
``apparatus for,'' ``machine for,'' or ``system for.'' See, e.g., MPEP
Sec. 2181, subsection I.A; Welker Bearing Co., v. Ph.D., Inc., 550
F.3d 1090, 1096 (Fed. Cir. 2008); Mass. Inst. of Tech. v. Abacus
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media
Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 704 (Fed. Cir.
1998); Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1214-15 (Fed.
Cir. 1998). This list is not exhaustive, and similar generic
placeholders may invoke 35 U.S.C. 112(f). Note that there is no fixed
list of generic placeholders that always result in 35 U.S.C. 112(f)
interpretation, and likewise there is no fixed list of words that
always avoid 35 U.S.C. 112(f) interpretation. Every case will turn on
its own unique set of facts.
Even when a claim limitation uses the term ``means'' or a generic
placeholder for the term ``means,'' a limitation will not invoke 35
U.S.C. 112(f) if there is a structural modifier that further describes
the term ``means'' or the generic placeholder. Compare Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)
(concluding that the term ``detent mechanism'' did not invoke pre-AIA
35 U.S.C. 112, sixth paragraph because the modifier ``detent'' denotes
a type of structural device with a generally understood meaning in the
mechanical arts), with Mass. Inst. of Tech., 462 F.3d at 1354
(concluding that the term ``colorant selection mechanism'' did invoke
pre-AIA 35 U.S.C. 112, sixth paragraph because the modifier ``colorant
selection'' does not connote sufficient structure to a person of
ordinary skill in the art). To determine whether a word, term, or
phrase coupled with a function denotes structure, examiners should
check whether: (1) The specification provides a description sufficient
to inform one of ordinary skill in the art that the term denotes
structure; (2) general and subject matter specific dictionaries provide
evidence that the term has achieved recognition as a noun denoting
structure; and (3) the prior art provides evidence that the term has an
art-recognized structure to perform the claimed function. See MPEP
Sec. 2181, subsection I, for more guidance on generic placeholders.
At issue in Williamson was whether a ``distributed learning control
module'' limitation in claims directed to a distributed learning system
should be interpreted as a means-plus-function limitation. See
Williamson, 792 F.3d at 1347. The Federal Circuit concluded that ``the
`distributed learning control module' limitation fails to recite
sufficiently definite structure and that the presumption against means-
plus-function claiming is rebutted.'' Id. at 1351. In support, the
Federal Circuit determined that: ``the word `module' does not provide
any indication of structure because it sets forth the same black box
recitation of structure for providing the same specified function as if
the term `means' had been used''; ``[t]he prefix `distributed learning
control' does not impart structure into the term `module' ''; and ``the
written description fails to impart any structural significance to the
term.'' Id. at 1350-51.
In view of Williamson, examiners should apply the applicable
presumption and the 3-prong analysis to interpret a computer-
implemented functional claim limitation in accordance with 35 U.S.C.
112(f) as appropriate, including determining if the claim sets forth
sufficient structure for performing the recited function. A
determination that a claim is being interpreted according to 35 U.S.C.
112(f) should be expressly stated in the examiner's Office action. In
response to the Office action, if applicant does not want to have the
claim limitation interpreted under 35 U.S.C. 112(f), applicant may: (1)
Present a sufficient showing to establish that the claim limitation
recites sufficient structure to perform the claimed function so as to
avoid interpretation under 35 U.S.C. 112(f); or (2) amend the claim
limitation in a way that avoids interpretation under 35 U.S.C. 112(f)
(e.g., by reciting sufficient structure to perform the claimed
function).
The BRI of a claim limitation that is subject to 35 U.S.C. 112(f),
``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.'' MPEP Sec. 2181. Thus, if the claim
limitation is being interpreted under 35 U.S.C. 112(f), the
specification must be consulted to determine the corresponding
structure, material, or act for performing the claimed function. See
MPEP Sec. 2181, subsection I, for more guidance on interpreting claim
limitations that are subject to 35 U.S.C. 112(f). Generally, the BRI
given to a claim term that is not subject to 35 U.S.C. 112(f) is its
plain meaning unless limited by a special definition or disavowal of
claim scope set forth in the specification which must be clear and
unmistakable (note that changing the plain meaning of a claim term by
setting forth a special definition or disavowal of claim scope is
uncommon). MPEP Sec. 2111.01, subsections I, IV. The plain meaning is
the ordinary and customary meaning given to the term by those of
ordinary skill in the art at the time of the effective filing date,
evidenced by, for example, the words of the claims themselves, the
specification, drawings, and prior art. Id. See, MPEP 2111, et. seq.,
for detailed guidance on the application of the BRI during examination.
B. Indefiniteness under 35 U.S.C. 112(b): For a computer-
implemented 35 U.S.C. 112(f) claim limitation, the specification must
disclose an algorithm for performing the claimed specific computer
function, or else the claim is indefinite under 35 U.S.C. 112(b). See
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir.
2008). In cases ``involving a special purpose computer-implemented
means-plus-function limitation, `[the Federal Circuit] has consistently
required that the structure disclosed in the specification be more than
simply a general purpose computer or microprocessor' and that the
specification must disclose an algorithm for performing the claimed
function.'' Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed.
Cir. 2012) (quoting Aristocrat, 521 F.3d at 1333). Thus, the
corresponding structure for performing the specific computer function
is not simply a general purpose computer by itself but a special
purpose computer as programmed to perform the disclosed algorithm. In
re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (``[W]hen the disclosed
structure is a computer programmed to carry out an algorithm, `the
disclosed structure is not the general purpose computer, but rather
that special purpose computer programmed to perform the disclosed
algorithm.' '' (quoting WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d
1339, 1349 (Fed. Cir. 1999))). An algorithm is defined, for example, as
``a finite sequence of steps for solving a logical or mathematical
problem or performing a task.'' Microsoft Computer Dictionary (5th ed.,
2002). Applicant may ``express that algorithm in any understandable
[[Page 60]]
terms including as a mathematical formula, in prose, or as a flow
chart, or in any other manner that provides sufficient structure.''
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir.
2008) (internal citation omitted).
Special purpose computer-implemented 35 U.S.C. 112(f) claim
limitations will be indefinite under 35 U.S.C. 112(b) when the
specification fails to disclose an algorithm to perform the claimed
function. For example, in Advanced Ground Information Systems, Inc. v.
Life360, Inc., 830 F.3d 1341 (Fed. Cir. 2016), the Federal Circuit
determined that the term ``symbol generator'' is a computer-implemented
means-plus-function limitation and that ``[t]he specifications of the
patents-in-suit do not disclose an operative algorithm for the claim
elements reciting `symbol generator.' '' Id. at 1348-49. The Federal
Circuit upheld the district court's determination that the term
``symbol generator'' is indefinite, observing that ``although the
district court recognized that the specification describes, in general
terms, that symbols are generated based on the latitude and longitude
of the participants, it nonetheless determined that the specification
fails to disclose an algorithm or description as to how those symbols
are actually generated.'' Id. at 1349 (internal quotation marks and
alterations omitted). See also, Blackboard, Inc. v. Desire2Learn, Inc.,
574 F.3d 1371, 1382-83 (Fed. Cir. 2009) (concluding that the
description of a server computer's ``access control manager'' software
feature was insufficient disclosure of corresponding structure to
support the computer-implemented ``means for assigning'' limitation
because ``what the patent calls the `access control manager' is simply
an abstraction that describes the function of controlling access to
course materials . . . [b]ut how it does so is left undisclosed.'');
Aristocrat, 521 F.3d at 1334-35 (explaining that ``the [patent's]
description of the embodiments is simply a description of the outcome
of the claimed functions, not a description of the structure, i.e., the
computer programmed to execute a particular algorithm'').
Moreover, the requirement for the disclosure of an algorithm cannot
be avoided by arguing that one of ordinary skill in the art is capable
of writing software to convert a general purpose computer to a special
purpose computer to perform the claimed function. See EON Corp. IP
Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015)
(disagreeing ``that a microprocessor can serve as sufficient structure
for a software function if a person of ordinary skill in the art could
implement the software function[,]'' noting that ``we have repeatedly
and unequivocally rejected this argument: a person of ordinary skill in
the art plays no role whatsoever in determining whether an algorithm
must be disclosed as structure for a functional claim element'');
Blackboard, 574 F.3d at 1385 (explaining that ``[t]he fact that an
ordinarily skilled artisan might be able to design a program to create
an access control list based on the system users' predetermined roles
goes to enablement[,]'' whereas ``[t]he question before us is whether
the specification contains a sufficiently precise description of the
`corresponding structure' to satisfy [pre-AIA] section 112, paragraph
6, not whether a person of skill in the art could devise some means to
carry out the recited function'').
Special purpose computer-implemented 35 U.S.C. 112(f) claim
limitations are also indefinite under 35 U.S.C. 112(b) when the
specification discloses an algorithm but the algorithm is not
sufficient to perform the entire claimed function(s). See Noah, 675
F.3d at 1319 (holding that ``[c]omputer-implemented means-plus-function
claims are indefinite unless the specification discloses an algorithm
to perform the function associated with the limitation[,]'' and that
``[w]hen the specification discloses an algorithm that only
accomplishes one of multiple identifiable functions performed by a
means-plus-function limitation, the specification is treated as if it
disclosed no algorithm.''). The sufficiency of the algorithm is
determined in view of what one of ordinary skill in the art would
understand as sufficient to define the structure and make the
boundaries of the claim understandable. For example, in Williamson, the
Federal Circuit found that the term ``distributed learning control
module'' is a means-plus-function limitation that performs three
specialized functions (i.e., ``receiving,'', ``relaying,'' and
``coordinating''), which ``must be implemented in a special purpose
computer.'' Williamson, 792 F.3d at 1351-52. The Federal Circuit
explained that ``[w]here there are multiple claimed functions, as we
have here, the [specification] must disclose adequate corresponding
structure to perform all of the claimed functions.'' Id. Yet the
Federal Circuit determined that the specification ``fails to disclose
any structure corresponding to the `coordinating' function.'' Id. at
1354. Specifically, the Federal Circuit found no ``disclosure of an
algorithm corresponding to the claimed `coordinating' function,''
concluding that the figures in the specification relied upon by
patentee as disclosing the required algorithm, instead describe ``a
presenter display interface'' and not an algorithm corresponding to the
claimed ``coordinating'' function. Id. at 1353-54. Accordingly, the
Federal Circuit affirmed the district court's judgment that claims
containing the ``distributed learning control module'' limitation are
invalid for indefiniteness under 35 U.S.C. 112(b). Id. at 1354.
Similarly, in Media Rights Technologies, Inc. v. Capital One
Financial Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015), the Federal
Circuit determined that the term ``compliance mechanism'' is a means-
plus-function limitation that performs four computer-implemented
functions (i.e., ``controlling data output by diverting a data pathway;
monitoring the controlled data pathway; managing an output path by
diverting a data pathway; and stopping the play of media content'').
The Federal Circuit determined ``that the specification fails to
adequately disclose the structure to perform all four of [the
`compliance mechanism's'] functions'' and affirmed the district court's
decision that the ``compliance mechanism'' limitation is indefinite.
Id. at 1375. Specifically, the Federal Circuit found that ``the
specification fails to disclose an operative algorithm for both the
`controlling data output' and `managing output path' functions[,]''
which ``both require diverting a data pathway[,]'' because the recited
C++ source code in the specification ``only returns various error
messages'' and ``does not, accordingly, explain how to perform the
diverting function[.]'' Id. at 1374-75. ``Additionally, the
specification does not disclose sufficient structure for the
`monitoring' function[,]'' because the disclosed ``set of rules . . .
which the `copyright compliance mechanism' applies to monitor the data
pathway to ensure there is no unauthorized recording of electronic
media . . . provides no detail about the rules themselves or how the
`copyright compliance mechanism' determines whether the rules are being
enforced.'' Id. at 1375. See MPEP Sec. 2181, subsection II(B), for
additional guidance on evaluating description necessary to support
computer-implemented 35 U.S.C. 112(f) claim limitations.
A computer-implemented functional claim may also be indefinite when
the 3-prong analysis for determining whether the claim limitation
should be interpreted under 35 U.S.C. 112(f) is inconclusive because of
ambiguous words in the claim. After taking into
[[Page 61]]
consideration the language in the claims, the specification, and how
those of ordinary skill in the art would understand the language in the
claims in light of the disclosure, the examiner should make a
determination regarding whether the words in the claim recite
sufficiently definite structure that performs the claimed function. If
the applicant disagrees with the examiner's interpretation of the claim
limitation, the applicant has the opportunity during the application
process to present arguments, and amend the claim if needed, to clarify
whether Sec. 112(f) applies.
When a claim containing a computer-implemented 35 U.S.C. 112(f)
claim limitation is found to be indefinite under 35 U.S.C. 112(b) for
failure to disclose sufficient corresponding structure (e.g., the
computer and the algorithm) in the specification that performs the
entire claimed function, it will also lack written description under 35
U.S.C. 112(a). See MPEP Sec. 2163.03, subsection VI. Examiners should
further consider whether the disclosure contains sufficient information
regarding the subject matter of the claims as to enable one skilled in
the pertinent art to make and use the full scope of the claimed
invention in compliance with the enablement requirement of 35 U.S.C.
112(a). See MPEP Sec. 2161.01, subsection III and MPEP Sec. 2164.08.
II. Review of Issues under 35 U.S.C. 112(a) Related to Examination
of Computer-Implemented Functional Claim Limitations: Even if a claim
is not construed as a means-plus-function limitation under 35 U.S.C.
112(f), computer-implemented functional claim language must still be
evaluated for sufficient disclosure under the written description and
enablement requirements of 35 U.S.C. 112(a). As explained in further
detail below, a specification must describe the claimed invention in
sufficient detail (e.g., by disclosure of an algorithm) to establish
that the applicant had possession of the claimed invention as of the
application filing date. Additionally, any analysis of whether a
particular claim is supported by the disclosure in an application
requires a determination of whether that disclosure, when filed,
contained sufficient information regarding the subject matter of the
claims as to enable one skilled in the pertinent art to make and use
the claimed invention. This enablement requirement of 35 U.S.C. 112(a)
is separate and distinct from the written description requirement,
Ariad, 598 F.3d at 1341, and serves the purpose of ``ensur[ing] that
the invention is communicated to the interested public in a meaningful
way,'' MPEP Sec. 2164.
A. Written Description Requirement of 35 U.S.C. 112(a): At issue in
Vasudevan was whether the patent specification provided sufficient
written description support for a limitation of the asserted claims.
Vasudevan, 782 F.3d at 681-83. The Federal Circuit explained that
``[t]he test for the sufficiency of the written description `is whether
the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.' '' Id. at 682 (quoting
Ariad, 598 F.3d at 1351). The Federal Circuit emphasized that ``[t]he
written description requirement is not met if the specification merely
describes a `desired result.' '' Vasudevan, 782 F.3d at 682 (quoting
Ariad, 598 F.3d at 1349). Thus, in applying this standard to the
computer-implemented functional claim at issue, the Federal Circuit
stated that ``[t]he more telling question is whether the specification
shows possession by the inventor of how [the claimed function] is
achieved.'' Vasudevan, 782 F.3d at 683.
In order to satisfy the written description requirement set forth
in 35 U.S.C. 112(a), the specification must describe the claimed
invention in sufficient detail such that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
invention at the time of filing. For instance, the specification must
provide a sufficient description of an invention, not an indication of
a result that one might achieve. The level of detail required to
satisfy the written description requirement varies depending on the
nature and scope of the claims and on the complexity and predictability
of the relevant technology. Information that is well known in the art
need not be described in detail in the specification. However,
sufficient information must be provided to show that the inventor had
possession of the invention as claimed. See MPEP Sec. 2163, subsection
II(A)(2).
The analysis of whether the specification complies with the written
description requirement calls for the examiner to compare the scope of
the claim with the scope of the description to determine whether
applicant has demonstrated possession of the claimed invention. Id.;
see also Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir.
2000) (``The purpose of [the written description requirement] is to
ensure that the scope of the right to exclude, as set forth in the
claims, does not overreach the scope of the inventor's contribution to
the field of art as described in the patent specification'');
LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345
(Fed. Cir. 2005) (``Whether the flaw in the specification is regarded
as a failure to demonstrate that the applicant possessed the full scope
of the invention recited in [the claim] or a failure to enable the full
breadth of that claim, the specification provides inadequate support
for the claim under [Sec. 112(a)]''); cf. id. (``A claim will not be
invalidated on [Sec. ] 112 grounds simply because the embodiments of
the specification do not contain examples explicitly covering the full
scope of the claim language.''). While ``[t]here is no special rule for
supporting a genus by the disclosure of a species,'' the Federal
Circuit has stated that ``[w]hether the genus is supported vel non
depends upon the state of the art and the nature and breadth of the
genus.'' Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352
(Fed. Cir. 2011); id. (further explaining that ``so long as disclosure
of the species is sufficient to convey to one skilled in the art that
the inventor possessed the subject matter of the genus, the genus will
be supported by an adequate written description.''). See also Rivera v.
Int'l Trade Comm'n, 857 F.3d 1315, 1319-21 (Fed. Cir. 2017) (affirming
the Commission's findings that ``the specification did not provide the
necessary written description support for the full breadth of the
asserted claims,'' where the claims were broadly drawn to a ``container
. . . adapted to hold brewing material'' while the specification
disclosed only a ``pod adapter assembly'' or ``receptacle'' designed to
hold a ``pod'').
Computer-implemented inventions are at times disclosed and claimed
in terms of their functionality. For computer-implemented functional
claims, the determination of the sufficiency of the disclosure will
require an inquiry into the sufficiency of both the disclosed hardware
and the disclosed software (i.e., ``how [the claimed function] is
achieved,'' Vasudevan, 782 F.3d at 683), due to the interrelationship
and interdependence of computer hardware and software. When examining
computer-implemented, software-related claims, examiners should
determine whether the specification discloses the computer and the
algorithm(s) that achieve the claimed function in sufficient detail
that one of ordinary skill in the art can reasonably conclude that the
inventor possessed the claimed subject matter at the time of filing. An
algorithm is defined, for example, as ``a finite sequence of steps for
solving a logical or
[[Page 62]]
mathematical problem or performing a task.'' Microsoft Computer
Dictionary (5th ed., 2002). Applicant may ``express that algorithm in
any understandable terms including as a mathematical formula, in prose,
or as a flow chart, or in any other manner that provides sufficient
structure.'' Finisar, 523 F.3d at 1340 (internal citation omitted). It
is not enough that one skilled in the art could theoretically write a
program to achieve the claimed function, rather the specification
itself must explain how the claimed function is achieved to demonstrate
that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d
at 682-83. If the specification does not provide a disclosure of the
computer and algorithm(s) in sufficient detail to demonstrate to one of
ordinary skill in the art that the inventor possessed the invention
that achieves the claimed result, a rejection under 35 U.S.C. 112(a)
for lack of written description must be made. See MPEP Sec. 2161.01,
subsection I.
For example, in Vasudevan, the Federal Circuit evaluated ``whether
the specification shows possession by the inventor of how accessing
disparate databases is achieved.'' Vasudevan, 782 F.3d at 683. The
defendant in district court argued that ``the specification does not
show that the inventor had possession of the ability to access
`disparate databases' '' because ``the specification describes a
result, but does not show how to achieve the result.'' Id. at 682. On
appeal, however, the Federal Circuit found that expert testimony given
in the district court raises ``a genuine issue of material fact on
whether the specification shows how to achieve the functionality of
accessing disparate databases.'' Id. at 683. The expert had opined that
specific portions of the specification explain ``that serialized files
can be used to correlate parameters from two databases,'' and that
``those correlation parameters can be used to identify data in one
database that is correlated to data in another.'' Id. The Federal
Circuit ruled that this expert opinion raises a genuine issue of fact
as to whether the inventor has possession of an invention that achieved
the claimed result. Id. MPEP Sec. 2161.01, subsection I and MPEP Sec.
2163 contain additional information on determining whether there is
adequate written description support for computer-implemented
functional claim limitations.
B. Enablement Requirement of 35 U.S.C. 112(a): At issue in
Vasudevan was also whether the patent specification enabled a person of
skill in the art to make and use the claimed invention. Vasudevan, 782
F.3d at 683-85. The Federal Circuit explained that ``[a] claim is
sufficiently enabled even if `a considerable amount of experimentation'
is necessary, so long as the experimentation `is merely routine, or if
the specification in question provides a reasonable amount of guidance
with respect to the direction in which the experimentation should
proceed.' '' Id. at 684 (quoting In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988)). ``On the other hand, if `undue experimentation' is needed,
the claims are invalid.'' Id. ``In determining whether experimentation
is undue, Wands lists a number of factors to consider: `They include
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims.' ''
Id.
To satisfy the enablement requirement of 35 U.S.C. 112(a), the
specification must teach those skilled in the art how to make and use
the full scope of the claimed invention without undue experimentation.
All questions of enablement under 35 U.S.C. 112(a) are evaluated
against the claimed subject matter with the focus of the examination
inquiry being whether everything within the scope of the claim is
enabled. Accordingly, examiners should determine what each claim
recites and what subject matter is encompassed by the claim when the
claim is considered as a whole, not when its parts are analyzed
individually. See MPEP Sec. 2161.01, subsection III, and MPEP Sec.
2164.08.
Not everything necessary to practice the invention need be
disclosed. Trs. of Bos. Univ. v. Everlight Elecs. Co., LTD., 896 F.3d
1357, 1364 (Fed. Cir. 2018) (explaining that while ``the specification
must enable the full scope of the claimed invention[,]'' ``[t]his is
not to say that the specification must expressly spell out every
possible iteration of every claim.''). For instance, `` `a
specification need not disclose what is well known in the art.' '' Id.
(quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed.
Cir. 1997)); see also AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,
1244 (Fed. Cir. 2003). This is of particular importance with respect to
computer-implemented inventions due to the high level of skill in the
art and the similarly high level of predictability in generating
programs to achieve an intended result without undue experimentation.
However, applicant cannot rely on the knowledge of one skilled in the
art to supply information that is required to enable the novel aspect
of the claimed invention when the enabling knowledge is in fact not
known in the art. See MPEP Sec. 2161.01, subsection III, and MPEP
Sec. 2164.08.
The Federal Circuit has repeatedly held that the specification must
teach those skilled in the art how to make and use the full scope of
the claimed invention without undue experimentation. See Trs. of Bos.
Univ., 896 F.3d at 1364 (`` `The scope of enablement . . . is that
which is disclosed in the specification plus the scope of what would be
known to one of ordinary skill in the art without undue
experimentation.' '' (quoting Nat'l Recovery Techs., Inc. v. Magnetic
Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999))). For
example, in Sitrick v. Dreamworks, LLC, 516 F.3d 993 (Fed. Cir. 2008),
the claims at issue were directed to ``integrating'' or
``substituting'' a user's audio signal or visual image into a pre-
existing video game or movie. Id. at 995-97. While the claims covered
both video games and movies, the specification only taught the skilled
artisan how to substitute and integrate user images into video games.
Id. at 1000. The Federal Circuit held that the specification ``did not
enable the full scope of the asserted claims'' because ``one skilled in
the art could not take the disclosure in the specification with respect
to substitution or integration of user images in video games and
substitute a user image for a pre-existing character image in movies
without undue experimentation.'' Id.
With respect to the breadth of a claim, the relevant concern is
whether the scope of enablement provided to one skilled in the art by
the disclosure is commensurate with the scope of protection sought by
the claims. In making this determination, examiners should consider (1)
how broad the claim is with respect to the disclosure and (2) whether
one skilled in the art could make and use the entire scope of the
claimed invention without undue experimentation. See MPEP Sec.
2161.01, subsection III, and MPEP Sec. 2164.08. A rejection for lack
of enablement must be made when the specification does not enable the
full scope of the claim. For more information regarding the enablement
requirement, see MPEP Sec. Sec. 2164.01 through 2164.08.
[[Page 63]]
Dated: December 20, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2018-28283 Filed 1-4-19; 8:45 am]
BILLING CODE 3510-16-P
