35 U.S.C. 112(f) Form Paragraphs

7.30.04: Use of Means (or Step for) in Claim Drafting and Rebuttable Presumptions Raised Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph).

The presumption that 35 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.

Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function. Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. The present application is being examined under the pre-AIA first to invent provisions.

Examiner Note:

  1. Use this paragraph ONLY ONCE in a given Office action when claim elements use “means” (or “step for”) or otherwise invoke treatment under 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) by using a substitute term for “means” that serves as a generic placeholder.
  2. This paragraph must be preceded with form paragraph 7.30.03 unless already cited in a previous Office action.
  3. An explanation should be provided when the presumptions raised are rebutted by the claim language, for example by using “means” in a claim element along with definite structure that performs the function or by not using “means” and failing to recite structure that performs the function.
  4. This paragraph may be followed by form paragraphs 7.34.11, 7.34.16, 7.34.18, 7.34.19, 7.34.20, 7.34.21, as appropriate.

7.34.21 Claim Limitation Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim limitation(s) “[1]” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “[2]” coupled with functional language “[3]” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. [4]. Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) [5] has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.

A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: [6].

If applicant wishes to provide further explanation or dispute the examiner's interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.

If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2173et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).

Examiner Note:

  1. Use this form paragraph ONLY when additional explanation regarding treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is necessary. For example, use this paragraph if clarification is needed when a claim element does not use the word “means” but no structure for performing the function is recited in the claim itself or when the associated structure in the specification for performing the function is needs explanation. If the claim element clearly invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and the corresponding structure is easily identified in the specification for performing the claimed function, it is not necessary to use this form paragraph.

Examiner Note:

  1. This paragraph may be used to explain more than one claim when multiple claims recite similar language or raise similar issues.

Examiner Note:

  1. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
  2. In bracket 2, recite the generic placeholder that is merely a substitute for the term “means.”
  3. In bracket 3, recite the functional language.
  4. In bracket 4, provide an explanation, if appropriate, why the generic placeholder is not recognized as the name of a structure but is merely a substitute for the term “means.”
  5. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.
  6. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference character

7.34.11 Modifier of “Means” Lacks Function

Regarding claim [1], the word “means” is preceded by the word(s) “[2]” in an attempt to use a “means” clause to recite a claim element as a means for performing a specified function. However, since no function is specified by the word(s) preceding “means,” it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).

Examiner Note:

  1. It is necessary for the words which precede “means” to convey a function to be performed. For example, the phrase “latch means” is definite because the word “latch” conveys the function “latching.” In general, if the phrase can be restated as “means for ________,” and it still makes sense, it is definite. In the above example, “latch means” can be restated as “means for latching.” This is clearly definite. However, if “conduit means” is restated as “means for conduiting,” the phrase makes no sense because the word “conduit” has no functional connotation, and the phrase is indefinite.
  2. This form paragraph must be preceded by form paragraph 7.34.01.

7.34.16 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

The claim limitation "[1]" uses the phrase "means for" or "step for" or a generic placeholder coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].

If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase "means for" or "step for" or the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.

If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph

Examiner Note:

  1. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
  2. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.)
  3. This form paragraph may be used when the phrase "means for" or "step for" is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.
  4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

7.34.17 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Applicant Asserts that Claim Limitation Is Invoking 35 U.S.C. 112(f) or pre-AIA 35 US.C. 112, Sixth Paragraph, but the Phrase “Means for” or “Step for” Is Not Used

Applicant asserts that the claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because [2]. If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (a) Amend the claim to include the phrase “means for” or “step for”. The phrase “means for” or “step for” must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or (b) Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

  1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, even though the phrase “means for” or “step for” is not used in the claim limitation. See MPEP § 706.07(a) for guidance on when the second action may be made final.
  2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
  3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.
  4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

7.34.18 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112,

2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]

Applicant may:

(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).

If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:

(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or

(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP § 608.01(o) and 2181.

Examiner Note:

  1. 1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.
  2. 2.
  3. In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.
  4. 3.
  5. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.
7.34.19: No clear link to corresponding structure

 

7.34.22 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, Applicant Asserts that Claim Limitation Does Not Invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph, but No Structure is Recited to Perform the Claimed Function

Applicant asserts that the claim element “[1]” is a limitation that does not invoke 35 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph because [2]. If applicant does not wish to have the claim limitation treated under 35 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph applicant may:

  • (a) Amend the claim to add structure, material or acts that are sufficient to perform the claimed function; or
  • (b) Present a sufficient showing that the claim limitation recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

  1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation does not invoke 35 U.S.C. 112(f), even though no structure is provided in the claim limitation for performing the function. See MPEP § 706.07(a) for guidance on when the second action may be made final.
  2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
  3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function.
  4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

7.34.20 The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element “[1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.

Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant should:

(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or

(c) State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.

Examiner Note:

In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

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