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2187 Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph [R-10.2019]

Form paragraphs 7.30.03.h, 7.30.03, and 7.30.05 - 7.30.07 should be used, as appropriate, when a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP § 2181. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph relating to 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, use form paragraphs 7.34.23 - 7.34.24

¶ 7.30.03.h Header for Claim Interpretation

CLAIM INTERPRETATION

Examiner Note:

  • 1. This form paragraph may be used in a first Office action or when a claim interpretation issue first arises, and need only be used once in an application, when appropriate.
  • 2. This form paragraph may be used to preface any clarifying remarks regarding claim interpretation that the examiner chooses to add to enhance the prosecution record.
  • 3. This form paragraph should precede form paragraphs 7.30.03 and 7.30.05, when applicable.

¶ 7.30.03 Statement of Statutory Basis, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph

The following is a quotation of 35 U.S.C. 112(f):

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

The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:

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

Examiner Note:

  • 1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.
  • 2. 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) or pre-AIA 35 U.S.C. 112, sixth paragraph.
  • 3. This form paragraph must be preceded by 7.30.03.h and followed with form paragraph 7.30.05.

¶ 7.30.05 Broadest Reasonable Interpretation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph: Use of "Means" (or "Step") in Claim Drafting and Rebuttable Presumptions Raised

The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.

As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:

  • (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.

Use of the word "means" (or "step") in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.

Absence of the word "means" (or "step") in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.

Claim limitations in this application that use the word "means" (or "step") are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word "means" (or "step") are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.

Examiner Note:

  • 1. Use this paragraph ONLY ONCE in a given Office action the first time that a claim limitation uses "means" (or "step") or otherwise invokes treatment under 35 U.S.C. 112(f) or 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. When a claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (i.e., it meets the three-prong test), to provide clarification the examiner may identify the structure, material, or act disclosed in the specification that supports the recited function by adding explanatory remarks after this paragraph.
  • 4. When the presumptions raised are rebutted by the claim language, for example by not using "means" and failing to recite structure that performs the function, or by using "means" along with definite structure that performs the function, use form paragraph 7.30.06 and/or 7.30.07.
  • 5. A claim limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, that raises issues under 35 U.S.C. 112(a) and/or 112(b) or pre-AIA 35 U.S.C. 112, first and/or second paragraphs, respectively, should also be addressed, as appropriate. See MPEP § 2185.

¶ 7.30.06 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph, Invoked Despite Absence of "Means"

This application includes one or more claim limitations that do not use the word "means," but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: [1] in claim [2].

Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.

If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

Examiner Note:

  • 1. Use this paragraph ONLY ONCE in a given Office action the first time that a claim limitation invokes treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph by using a substitute term for "means" that serves as a generic placeholder.
  • 2. In bracket 1, identify each claim limitation, and in bracket 2 indicate the claim(s) in which each respective limitation appears.
  • 3. This paragraph must be preceded with form paragraph 7.30.05 unless already cited in a previous Office action.

¶ 7.30.07 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph, Not Invoked Despite Presence of "Means" or "Step"

This application includes one or more claim limitations that use the word "means" or "step" but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: [1] in claim [2].

Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.

If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.

Examiner Note:

  • 1. Use this paragraph ONLY ONCE in a given Office action the first time that a claim limitation includes the word "means" or "step" but does not invoke treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because sufficient structure, materials, or acts to perform the recited function are present.
  • 2. In bracket 1, identify each claim limitation, and in bracket 2 indicate the claim(s) in which each respective limitation appears.
  • 3. This paragraph must be preceded with form paragraph 7.30.05 unless already cited in a previous Office action.

¶ 7.34.23  Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph: Claim Limitation is Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth paragraph, but Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Is Lacking, Insufficient, or Not Clearly Linked

Claim limitation "[1]" 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 performing the entire claimed function and to clearly link the structure, material, or acts to the function. [2] Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

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;
  • (b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
  • (c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, 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 and clearly links them to the function 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.  In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
  • 2.  In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the entire claimed function or why there is no clear linkage between the structure, material, or acts and the function. For example, explain that (i) the disclosure is devoid of any structure that performs the function in the claim, (ii) the structure described in the specification does not perform the entire function in the claim, or (iii) no association between the structure and the function can be found in the specification.
  • 3.  This form paragraph must be preceded by form paragraphs 7.30.03.h, 7.30.03, and 7.30.05 (to set forth the claim interpretation and statutory basis for 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph), and then 7.30.02 or 7.103 and 7.34.01 (to set forth the statutory basis for the indefiniteness rejection and identify the claim at issue) and 7.30.06, if appropriate (invoked despite the absence of means).
  • 4. When a rejection is made under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because the disclosure is inadequate to support the limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description should also be considered. See MPEP § 2181, subsection IV.

¶ 7.34.24 Rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph: Unclear Whether Claim Limitation Is To Be Interpreted Under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph – Result of 3-Prong Test Inconclusive

Claim limitation [1] has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because [2]. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:

  • (a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting "means" or a generic placeholder for means, or by reciting "step." The "means," generic placeholder, or "step" must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
  • (b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
  • (c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
  • (d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.

Examiner Note:

  • 1.  This paragraph should be used after the examiner has attempted to perform the three-prong analysis from MPEP § 2181, subsection I, and is unable to conclude whether the claim limitation should be treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because of ambiguous words in the claim. This situation should be rare.
  • 2.  In bracket 1, identify the claim and 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, identify the reason that the three-prong test was inclusive. The possibilities include:
    • the term "means" or generic placeholder is modified by a word, which is ambiguous regarding whether it conveys structure or function;
    • the term "step" is modified by a word, which is ambiguous regarding whether it conveys an act or a function;
    • the claim limitation uses the word "means" or a generic placeholder coupled with functional language, but it is modified by some structure or material that is ambiguous regarding whether that structure or material is sufficient for performing the claimed function;
    • the claim limitation uses the word "step" coupled with functional language, but it is modified by some act that is ambiguous regarding whether that act is sufficient for performing the claimed function.
  • 4. This form paragraph may also be used in response to an applicant's reply in which applicant disputes the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP § 707.07(a) for guidance on when the second action may be made final.
  • 5. This form paragraph must be preceded by form paragraphs 7.30.03.h, 7.30.03, and 7.30.05 (to set forth the claim interpretation and statutory basis for 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph), and then 7.30.02 or 7.103 and 7.34.01 (to set forth the statutory basis for the indefiniteness rejection).

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Last Modified: 06/25/2020 18:22:35