"a Preposition Is Not Something to End a Sentence With."

• Publication year: 2021
• Author: D. Benjamin Borson

"A preposition is not something to end a sentence with."

D. Benjamin Borson

Borson Law Group P.C.

FUNCTIONAL CLAIMING UNDER 35 U.S.C. § 112(F), INDEFINITENESS UNDER 35 U.S.C. § 112(B), AND USPTO GUIDANCES OF 2019 AND 2021.

Background

The first guidance to be discussed was originally published in January 2019 ("2019 Guidance"). Subsequently, on January 6, 2021, Director Andrei Iancu published a memorandum to the Patent Trial and Appeal Board (PTAB) providing new guidance on indefiniteness under 35 U.S.C. § 112(b) ("2021 Guidance") to be used in America Invents Act ("AIA") Post-Grant Proceedings (i.e., inter partes review (IPR), post grant review (PGR), and Covered Business Methods (CBM)).

Review of Current Examination Guidelines

Claims for certain processes may include the results of a process without specification of the structure, materials, or acts needed for achieving the results. These claims may be drafted in the "means plus function" format by using the term 'means' and including functional language, and are often found in computer-related patents and applications. The claims are termed 'functional claims', and are regulated under pre-AIA 35 U.S.C. § 112, 6th paragraph or AIA § 112(f). Such claims must also meet the definiteness and enablement requirements of § 112(a) and (b).

Means plus function limitations are often used in patent claims for computer processes, based on the belief that a competent computer programmer would be able to draft computer language to produce the desired result. However, such claims have been increasingly scrutinized under 35 U.S.C. § 112(a) for the written description and enablement requirements.

The Court of Appeals for the Federal Circuit has held that a claim with the phrase "means for" is analyzed under § 112(f). However, it was less clear whether claims that did not recite "means for" could also be subject to § 112(f). In prior decisions, the Federal Circuit has applied a strong presumption that claims lacking the "means for" phrase would not be regulated by § 112(f) under the decision in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014, "Packard"). Under the Packard standard, a claim would not be considered to fall under § 112(f) if the claim were "amenable to construction," or not "insolubly ambiguous." This resulted in a proliferation of functional claiming untethered to § 112(f) and free of the stricture set forth in the statute.

However, more recently, in the case Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc), the Federal Circuit overruled the "strong presumption" and the USTPO has released 2021 Guidance in accordance with Williamson.

2019 USPTO Guidance

The USPTO released newguidance(Docket No. PTO-P-2018-0059) on January 7, 2019, based on the Williamson case and has requested comments from the public. The guidance is summarized:

[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. at 1349 (citations and quotation marks omitted).

Examiners are instructed to consider the broadest reasonable interpretation (BRI) of the claim based on the Manual of Patent Examining Procedure ("MPEP") § 2181, 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.

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The phrases "means for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for" are all considered to be generic place holders ("nonce terms"). This list is not exclusive and any other placeholder, would be covered under § 112(f) when the remainder of the claim does not refer to a specific structure or steps. However, if a term has a well-known meaning in the art and defines sufficient structure to be implemented by those of skill, § 112(f) may not apply.

For example, in Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996), the court found that the term "detent mechanism" did not invoke pre-AIA 35 U.S.C. § 112, 6th paragraph because the modifier "detent" denotes a type of structural device with a generally understood meaning in the mechanical arts. In contrast, in Williamson, the Federal Circuit held that the term "distributed learning control module" should be interpreted under 112(f).

The MPEP incorporated the Williamson decision. The MPEP states:

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

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