112‎ > ‎

2181

2181    Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation [R-07.2015] 

I.    DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, SIXTH PARAGRAPH


WILLIAMSON


Appellants' system claims are directed to a "converter configured to convert" (claim 7) and a "system configured to convert" (claim 14). App.  Br. 13—16. In the event of further prosecution, we invite the Examiner to consider whether any of the limitations of Appellants' system claims should be interpreted as means-plus-function limitations under 35 U.S.C. SS 1 12, sixth paragraph. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, (Fed. Cir. 2015) ("The standard [for identifying means-plus-function limitations] 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.").

----

Claim 1 recites three “unit[s]”, the name of each unit (e.g., “a vernacular pronunciation extracting unit”) corresponding to a function to be performed by the “unit” (e.g., “to extract a vernacular pronunciation in response to receipt of a Hanja character string”). These limitations do not include the word “means,” thus, a rebuttable presumption exists these limitations are not means-plus-function limitations. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption can be overcome if the limitation “fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. at 1349 (citation and internal quotation marks omitted). Contrary to Appellants argument (Br. 6), the presumption is not a “strong” one.1 As used herein, the term “means for” is replaced by the “nonce  word”2 “unit” thereby connoting one or more generic “black boxes” for performing all of the intended functions recited in claim 1. 


1 Since the filing of Appellants’ Brief, the Federal Circuit has overruled the strong presumption that a limitation lacking the word “means” is not subject to § 112,  6. Williamson, 792 F.3d at 1349. 


2 Although termed a “nonce word”, we recognize this characterization is somewhat inaccurate, the common meaning being “a word invented and used for a particular occasion.” Morris, W., The American Heritage Dictionary of the English Language, 892. Houghton Mifflin Company (1981). However, the word “unit” does have a generally accepted meaning including “an entire apparatus or the equipment that performs a specific function.” Id. at 1400. Thus, while not a made-up word, on the present facts the word “unit” at most restricts the preceding functional language to an apparatus but not to a particular structure (cf. “a window-mounted air conditioning unit”). Instead, the word “unit” is merely a transition between a shortened description of a function to be performed (e.g., vernacular pronunciation extracting) and the corresponding full description of that function (e.g., apparatus “to extract a vernacular pronunciation in response to receipt of a Hanja character string”). Thus, as used in claim 1, the term “unit” is a “non-structural generic placeholder” that is tantamount to the term “means” because it fails to connote sufficiently definite structure (i.e., a “nonce word”). Cf. Williamson 792 F.3d at 1350.



A.   The Claim Limitation Uses the Term “Means” or “Step” or a Generic Placeholder (A Term That Is Simply A Substitute for “Means”)


“[I]n order for a claim to meet the particularity requirement of ¶ 2, the corresponding structure(s) of a means-plus-function limitation must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation.” Atmel Corp. v. Information Storage Device, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999) (emphasis added). The proper inquiry “asks first whether structure is described in the specification, and if so, whether one skilled in the art would identify the structure from that description.” Id. at 1381 (emphasis in original).



B.   The Term “Means” or “Step” or the Generic Placeholder Must Be Modified By Functional Language


“Substantially” is often used to mean largely but not wholly what is specified. See, e.g., York Products, Inc., v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572-73 (Fed. Cir. 1996); See also Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d, 1554, 1562, (Fed. Cir. 1996).

C.   The Term “Means” or “Step” or the Generic Placeholder Must Not Be Modified By Sufficient Structure, Material, or Acts for Achieving the Specified Function


The feature at issue in claim 20 begins with the language “means for.” This leads to a presumption that this feature invokes 35 U.S.C. § 112, sixth paragraph. As the Federal Circuit explained:

Accordingly, in determining whether a claim element falls within § 112, ¶ 6, this court has presumed an applicant advisedly used the word “means” to invoke the statutory mandates for means-plus-function clauses. Two specific rules, however, overcome this presumption. First, a claim element that uses the word “means” but recites no function corresponding to the means does not invoke § 112, ¶ 6.

Second, even if the claim element specifies a function, if it also recites sufficient structure or material for performing that function, § 112, ¶ 6 does not apply. Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999) (citations omitted). Accordingly, the presumption can be rebutted if the feature at issue (i) recites no function, or (ii) recites sufficient structure or material for performing the function recited.



II.   DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, SIXTH PARAGRAPH


A.   The Corresponding Structure Must Be Disclosed In the Specification Itself in a Way That One Skilled In the Art Will Understand What Structure Will Perform the Recited Function


B.   Computer-Implemented Means-Plus-Function Limitations


In light of this conclusion, we next consider whether Appellants’ written description contains corresponding structure for the “evaluation unit” limitation. Cf. Aristocrat Techs Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008). In computer-implemented inventions such as the one at issue, the corresponding structure must include an “algorithm that transforms [a] general purpose microprocessor to a special purpose computer programmed to perform the disclosed algorithm.” Id. at 1338 (citation and internal quotation marks omitted.)


A module is an undefined structure that does not inform one of ordinary skill in the art what structure, material, or acts perform the claimed function.  Nor does a "computer processor" provide the requisite structure.  Our reviewing court has made clear that the corresponding structure for performing a specific function is required to be more than a simple general purpose computer or microprocessor.  See, e.g., Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).  To claim a means for performing a specific computer-imlemented function, and then to disclose only a general purpose computer or microprocessor as the structure designed to perform that function, amounts to pure functional claiming.  Id.  The structure corresponding to the means for a computer implemented function must imclude the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification.  Id.  Here, Appellants merely refer to modules that may include a computer processor but do not disclose any algorithm for preforming the claimed function.


C.   The Supporting Disclosure Clearly Links or Associates the Disclosed Structure, Material, or Acts to the Claimed Function


B. BRAUN

“[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.” B. Braun Medical, Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997).



MEDICAL INSTRUMENT

The rules that “structure corresponding to the claimed function must be disclosed in the specification with clear linkage between the structure and the claimed function serve worthy goals. Such rules are intended to produce certainty in result.” Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220 (Fed. Cir. 2003). “A computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm.” Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005).



III.   DETERMINING 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112 SECOND PARAGRAPH COMPLIANCE WHEN 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112 SIXTH PARAGRAPH IS INVOKED


IV.   DETERMINING WHETHER 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, FIRST PARAGRAPH SUPPORT EXISTS


ARIAD


A “generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010).


When a patent claims a genus using functional language to define a desired result, “the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.” AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1299 (Fed. Cir. 2014) (quoting Ariad, 598 F.3d at 1349).


V.   SINGLE MEANS CLAIMS


VI.   ENSURE THAT THE RECORD IS CLEAR


AOYAMA

“The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004) (citation omitted). “The court must construe the function of a means-plus function limitation to include the limitations contained in the claim language, and only those limitations.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). . . .

“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” Golight, 355 F.3d at 1334. “Under this second step, structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (internal citation and quotation omitted).

In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011).

BUDDE
 
The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed.Cir.2001).
 
CARDIAC
 
“The court must construe the function of a means-plus function limitation to include the limitations contained in the claim language, and only those limitations.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002)
 
DEFAULT PROOF, BIOMEDINO, DONALDSON

Therefore, we agree with the Examiner that claim 1 is indefinite because at best, the human involvement required in the claim fails to describe non-human structure and/or material, which perform the functions recited by the "means". See Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (fed. Cir. 2005), citing to In re Prater, 56 C.C.P.A. 1381, 415 F.2d 1393, 1398 (CCPA 1969) (“…a human being cannot constitute a “means”). The test is whether the Specification actually describes the structure that performs the claimed function. “If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) (citations omitted); see also In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).

DOSSEL

DONALDSON

As stated in In re Dossel, 115 F.3d 942, 946 (Fed. Cir. 1997) (quoting In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)), [a]lthough paragraph six statutorily provides that one may use means-plus-function language in a claim, one is still subject to the requirement that a claim “particularly point out and distinctly claim” the invention. Therefore, if one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.

ENVIRCO

Construing a means-plus-function claim limitation is a two-step process. First, the claim must be analyzed to determine whether the claim language actually invokes the provisions of 35 U.S.C. § 112, sixth paragraph. See Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000) (“If a claim element contains the word ‘means’ and recites a function, th[e] court presumes that element is a means-plus-function

element under § 112, ¶ 6. . . . That presumption falls, however, if the claim itself recites sufficient structure to perform the claimed function.”). The second step is to “determine what structures have been disclosed in the

specification that correspond to the means for performing that function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000). “[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.” B. Braun Medical, Inc. v. Abbott Labs., 124 F.3d

1419, 1424 (Fed. Cir. 1997). A means-plus-function claim “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, sixth paragraph.


The Court of Appeals for the Federal Circuit held that “the 'broadest reasonable interpretation' that an examiner may give means-plus-function language is that statutorily mandated in paragraph six of 35 USC § 112.” MPEP § 2181. “Accordingly, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” (id.) This “sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation.” (emphasis added.) In re Donaldson, 16 F.3d 1189, 1194 (Fed. Cir. 1994). 


Thus, as articulated in MPEP 2181, “the USPTO must apply 35 U.S.C. 112, sixth paragraph in appropriate cases, and give claims their broadest reasonable interpretation, in light of and consistent with the written description of the invention in the application.” [Emphasis added.] (See also, Br. 3.)


A structure disclosed in the specification qualifies as a “corresponding structure” if the specification or the prosecution history “clearly links or associates that structure to the function recited in the claim.” B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). With means-plus-function claiming, the narrower the disclosed structure in the specification, the narrower the claim coverage. Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1381 (Fed. Cir. 2013).


GOLIGHT 
 
Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004).
 
GREENBERG

Nor will claim language invoke a § 112, sixth paragraph, construction if persons of ordinary skill in the art reading the specification understand the term to be the name for a structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”).

INTEL

“[C]laim definiteness depends on the skill level of an ordinary artisan. Therefore, the specification need only disclose adequate defining structure to render the bounds of the claim understandable to an ordinary artisan.” Telcordia Techs., Inc. v Cisco Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir. 2010) (citing Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365-66 (Fed. Cir. 2003) (holding that the internal circuitry of an electronic device need not be disclosed in the specification if one of ordinary skill in the art would understand how to build and modify the device) (internal citation omitted)).

MAS-HAMILTON

In this “arrangement for” is a nonce expression or verbal construct that is simply a substitute for the term “means for.” See e.g., Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008); Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1213-15 (Fed. Cir. 1998).

MED. INSTRUMENTATION
 
The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function. “Under this second step, ‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.’ ” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed.Cir.2003) (quoting B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997)).
 
SAGE

Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997) (“[W]here a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format” even if the claim uses the term “means.”).

YORK

The term “substantially” is often construed in patent claims as “largely but not wholly that which is specified.” See, e.g., York Products, Inc., v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572-73 (Fed. Cir. 1996).
Comments