35 U.S.C. § 112(f)*: Making the Record Clear

1. 35 U.S.C. § 112(f)*:Making the Record Clear * 35 U.S.C. § 112, 6th paragraph for cases filed before 9/16/2012

2. Objectives • Benefits of a Clear Record • Overview of 112(f) 3-prong Analysis for Means-type Claims • Placing the 112(f) Presumptions on the record • Indicating when the 112(f) Presumptions are Overcome • Sample Statements

3. Benefits of a Clear Record • Clarifies the record with regard to the broadest reasonable interpretation for the claim limitations • Places the Applicant on notice with regard to the Office’s position enabling a more effective Applicant response • Assists in the evaluation of any afforded patent protection throughout the life of the patent

4. 112(f) Overview 3-prong Analysis for Means-type Claims Following MPEP 2181(I), a claim limitation should be interpreted according to 112(f) if it meets the following 3-prong analysis: • The claim limitation uses the phrase “means” or a term used as a substitute for “means” that is a generic placeholder; • The phrase “means” or the substitute term is modified by functional language, typically linked by the transition word “for” (e.g., “means for”) or another linking word; and, • The phrase “means” or the substitute term is not modified by sufficient structure or material for performing the specified function

5. 112(f) Presumptions • When an application contains claim limitations in the form of a term modified by functional language, note the 112(f) presumptions by use of FP 7.30.04 • FP 7.30.04 recites in part: “…Claim elements that use the word “means” are presumed to invoke 112(f) except as otherwise indicated in the Office Action. Similarly, claim elements that do not use the word “means” are presumed not to invoke 112(f) except as otherwise indicated in an Office Action.” • The Examiner must still complete the 3-prong analysis for each occurrence of a term modified by functional language indicating those limitations in which the presumptions set forth by FP 7.30.04 are overcome

6. 112(f) Presumption Overcome In addition to the use of FP 7.30.04, the prosecution record should be clarified when the presumptions are overcome, such as when: • a claim uses the word “means” and 112(f) is not invoked • Not modified by functional language • Includes sufficient structure or material for achieving the specified function • a claim uses a generic placeholder instead of the word “means” and 112(f) is invoked

7. Summary: Making the record clear After completing the 3-prong analysis for all recitations of a term modified by functional language, make your determinations clear in the record: • Use FP 7.30.04, once during prosecution, whenever a term modified by functional language is present in the claims to note 112(f) presumptions in the record • Specifically identify claim language that uses the word “means” and 112(f) is not invoked with explanation • Not modified by functional language • Includes sufficient structure to perform the associated function • Specifically identify claim language that uses a generic placeholder for the word “means” and 112(f) is invoked

8. Example 1 Result of 3-prong Analysis: “Means” + “function” + structure that performs the function ≠ 112(f) limitation • Use FP 7.30.04 • Identify explicit “means” claim language and explain why presumption is overcome Sample Statement: The limitation of claim [insert claim number(s)] that recite(s) [identify applicable limitation or identify group of limitations, for example those that recite “means”] is/are not being treated in accordance with 112(f) because the claimed function is modified by structure that performs the function.

9. Example 2 Result of 3-prong Analysis: “Means” + no associated function ≠ 112(f) limitation • Use FP 7.30.04 • Identify explicit “means” claim language and explain why presumption overcome. Sample Statement: The limitation of claim [insert claim number(s)] that recite(s) [identify applicable limitation or identify group of limitations, for example those that recite “means”] is/are not being treated in accordance with 112(f) because the means recitation does not have an associated function.

10. Example 3 Result of 3-prong Analysis: “Generic Placeholder” + “function” = 112(f) limitation • Use FP 7.30.04 • Identify claim language that includes a generic placeholder used as a substitute for means and has no structural meaning for performing the associated function that overcomes presumption Sample Statement: The limitation of claim [insert claim number(s)] that recite(s) [identify claim language that includes a generic placeholder as a substitute for means and has no structural meaning for performing the associated function] is/are being treated in accordance with 112(f) because the associated function is modified by a word that serves as a generic placeholder (i.e., the claim uses a term that is a substitute for “means”].

11. Summary • Make the record clear when examining claim limitations with functional language • Set forth the § 112(f) presumptions • Provide an explanation when the presumptions are overcome • Clarifying the record establishes a clear foundation for claim interpretation throughout prosecution, which benefits the examiner, the applicant, and the public