By Kevin E. Noonan --
Last Wednesday, the U.S. Patent and Trademark Office promulgated "Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues" (76 Fed. Reg. 7162). The Guidelines, which take effect immediately and apply to all pending applications, "are intended to assist United States Patent and Trademark Office (Office) personnel in the examination of claims in patent applications for compliance with 35 U.S.C. 112, second paragraph" as well as assist Office personnel in examining claims containing "functional language" ("means plus function" claims under 35 U.S.C. 112, 6th para.), "especially computer-implemented invention claims," and for compliance with 35 U.S.C. 112, 4th para. ("Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.")
The Guidelines contain generic reference to "optimizing patent quality" and "fostering innovation and competitiveness" as some of the reasons that the Office must issue patents "with clean and definite claim language" under the statute. Functionally, this requires Office personnel to give claim terms their "broadest reasonable interpretation" during examination, since the applicant has the opportunity to amend the claims or present arguments why claim terminology is definite (MPEP 2211). The Guidelines follow the rubrics of claim construction set forth by the Federal Circuit, inter alia, in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en banc), having a hierarchy starting with the plain meaning of the claim terms, express definitions in the specification, and arguments made by the applicant during prosecution. "Plain meaning" is defined as the "ordinary and customary meaning" of the term. The Guidelines repeat the conventional rationale that claims under examination are not entitled to a presumption of validity, and are not to be construed to be valid. Examination in the Office uses the broadest reasonable interpretation standard in order to "establish a clear record of what [the] applicant intends to claim." The standard for deciding that a claim term is indefinite is that the metes and bounds of the claim are clear under the broadest reasonable interpretation of its terms, which is defined as whether a person of ordinary skill could read the term to have more than one reasonable interpretation. If not, the claims "must be rejected." However, the Guidelines caution that merely because a claim term is broad it may not be indefinite "provided [that] the scope is clearly defined." The Guidelines also direct that claims should be examined to determine whether they invoke the "means plus function" format of 35 U.S.C. 112, 6th para.
The Guidelines set forth examples of claim terms that may be indefinite. These include:
1. Indeterminate terms, defined as functional claiming (that "recites a feature 'by what it does rather than by what it is'"). The Guidelines do not consider claims using functional language to be per se indefinite, but may be so when the claim "fails to provide a clear-cut indication of the scope of the subject matter" of the claim. Examples of such indefinite claims include so called "single means" claims, where "all means and methods for resolving the problem [addressed by the claim] may be encompassed by the claim." The Guidelines acknowledge that whether functional claim language is indefinite will depend on "context," i.e. whether the specification provides proper 35 U.S.C. 112, 1st para. support for the term. Examples of indefinite functional language include Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) and General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938), while instances of functional language that was found to satisfy the definiteness requirement include In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) and In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Examination should be performed as follows:
Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) Whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.
However, "[t]he primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise."
2. Terms of degree. The examination standard stated in the Guidelines is whether the specification provides some standard for measuring that degree," citing Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). If not, the question becomes whether the ordinarily skilled worker would be able to ascertain the scope. Satisfaction of either of these prongs of the inquiry renders the claim definite. Declaration evidence (pursuant to 37 C.F.R. 1.132) can also be used to support definiteness by providing examples.
3. Subjective terms are treated similarly to terms of degree, depending for definiteness on whether the specification provides "some standard for measuring the scope of the term," or whether the skilled worker would be able to ascertain the scope. However, "[a] claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. . . . Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention." The Guidelines cite the Datamize case as an example. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).
4. Markush language. The Guidelines purport to apply the indefinite rubrics to "any claim that recites a list of alternative useable species regardless of format." The size of the Markush group (i.e., the number of species) is not determinative but can be under conditions where the group is "so expansive that persons skilled in the art cannot determine the mete and bounds of the claimed invention (i.e., cannot envision all of the members of the group). Also indefinite are "improper" Markush claims, that encompass species that do not share a "single structural similarity" (defined as belonging to the same recognized chemical or physical (or art-recognized) class) or do not share a common use.
Included in this portion of the Guidelines are rules for determining whether a dependent claim complies with 35 U.S.C. 112, 4th para.; rejection is mandated rather than objecting to the claim as a matter of form.
Having reviewed examination, the Guidelines next discuss how compliance with 35 U.S.C. 112, 2nd para. should be integrated into assessing whether the specification complies with 35 U.S.C. 112, 1st para. The Guidelines do not mandate but do encourage the use of "glossaries" of terms in the specification as being "a helpful device for ensuring adequate definition of terms used in the claims." Examiners are also instructed to determine whether claims that are definite on their face are indefinite due to inconsistencies between how terms are used in the claims and in the specification, citing In re Cohn, 438 F.2d 989, 993 (CCPA 1971); In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); and In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. Jan. 6, 1997) (unpublished) as examples.
The portion of the Guidelines relating to 35 U.S.C. 112, 6th para. recite conventional rules regarding whether an applicant has invoked this claim format, relating to instances where "means for" and "step for" are used to so invoke the 6th para. structure and instances where the form is applied even though these terms are not used (and the presumptions that attach to each). The Guidelines set forth numerous examples of "non-structural terms" that invoke the format (including ``mechanism for,'' ``module for,'' ``device for,'' ``unit for,'' ``component for,'' ``element for,'' ``member for,'' ``apparatus for,'' ``machine for,'' or ``system for") and ones that have been found to not invoke the format (including ``circuit for,'' ``detent mechanism,'' ``digital detector for,'' ``reciprocating member,'' ``connector assembly,'' ``perforation,'' ``sealingly connected joints,'' and ``eyeglass hanger member.''). Indications that the format is intended can also be discerned from the specification, dictionary definitions and the art. The Guidelines also provide a modification to the 3-pronged analysis set forth in MPEP 2181:
Examiners will apply Sec. 112, 6th para. to a claim limitation that meets the following conditions: (1) The claim limitation uses the phrase ``means for'' or ``step for'' or a non-structural term that does not have a structural modifier; (2) the phrase ``means for'' or ``step for'' or the non-structural term recited in the claim is modified by functional language; and (3) the phrase ``means for'' or ``step for'' or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function.
The application of the Guidelines to claims using the 112, 6th para. format requires that "the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function . . . A bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation."
The Guidelines specifically address "computer-implemented means-plus-function limitations," requiring that the corresponding structure is required to be more than simply a general purpose computer or microprocessor," citing Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The Guidelines state that disclosing only a general purpose computer as the structure to perform the function "amounts to pure functional claiming. Instead, the Guidelines require that the computer-implemented function "must" include the algorithm that transforms the general purpose computer into a "special purpose computer." Generic recitations of "software" that do not provide sufficient details to provide the algorithm are insufficient. The Guidelines expressly reject the proposition that disclosure of the algorithm is unnecessary if the skilled worker "is capable of writing the software," citing Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-1385 (Fed. Cir. 2009) and Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366-67 (Fed. Cir. 2008).
Turning to how Examiners should handle indefinite claim language, the Guidelines require that the Examiner "establish a clear record" ("a complete and accurate picture of the Office's consideration of the patentability of an application"), referring to MPEP 2173.05 to provide "numerous examples of rationales that may support" a 112, 2nd para. rejection. This record includes the Office Action, which should provide the applicant with a "sufficient explanation" of the grounds of rejection for the Applicant to be able to provide "a meaningful response," by then Examiner "pointing out the specific term or phrase that is indefinite" and why the Examiner considers it to be so. However, while the Examiner properly can provide suggestions on how to amend the claim to overcome the rejection, the Guidelines state that rejection under 35 U.S.C. 112, 2nd para. should not be made "merely . . . to improve the clarity or precision of the language used;" a claim objection is the more appropriate way to achieve this goal. The Guidelines also require that the Examiner "practice compact prosecution" by "clearly articulat[ing] any rejection early in the prosecution process so that the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity." If indefiniteness is the only issue, the Guidelines instruct examiners to "open lines of communication with the applicant" by suggesting ways to overcome the rejection through interviews. If an applicant overcomes an indefiniteness rejection, the Guidelines encourage the Examiner to put on the record the reasons for allowance, including the steps taken that overcame this rejection pursuant to 37 C.F.R. 1.104(e).
Finally, the Guidelines contain a brief synopsis of patentability requirements for computer-implemented inventions than encompasses all the statutory requirements.
Public comments are solicited, to be received on or before April 11, 2011; comments should be submitted by e-mail to [email protected]. Promulgation of these Guidelines does not constitute substantive rulemaking by the Office, and thus do not require a public hearing under the Administrative Procedures Act (there will be no public hearing). In addition, the Notice asserts that public notice and comment are not required, and that the Office merely solicits comments for their own benefit. Also, failure of the Office to comply with these Guidelines is neither appealable nor petitionable.
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