35 USC 112 (f)*: Identifying Limitations That Invoke 112(f)

1. 35 USC 112 (f)*:Identifying Limitations That Invoke 112(f) * 35 USC 112, 6th paragraph for cases filed before 9/16/2012

2. Topics • Overview of 112(f) for Means-type Claims • Builds on 2011 § 112 Supplemental Guidelines and Training • The 3-Prong Analysis • Examples

3. Purpose of Refresher Training • To reinforce 2011 § 112 training on tools to set boundaries for functional claim language • Topic of 2013 Software Partnership Roundtables • Ongoing public discussion regarding clear claim boundaries

4. Importance of Identifying 112(f) Limitations • Governs broadest reasonable interpretation of the claim limitation • Prevents potential over assertion of claims

5. 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 claimed function

6. 112(f) Presumption for “Means” • The term “means” with functional language raises a rebuttable presumption that the claim element is to be treated under § 112(f) • The presumption is rebutted when the function is recited with sufficient structure or material within the claim itself to entirely perform the recited function

7. 112(f) Presumption in the Absence of “Means” • Absence of the term “means” with functional language raises a rebuttable presumption that the claim element is not to be treated under § 112(f) • The presumption is rebutted when the claim element (1) recites a generic placeholder for structure or material; (2) recites a function; and (3) does not recite sufficient structure or material to perform the function. • Terms that represent only non-structural elements such as information, data, instructions, and software per sewould not serve as substitutes for “means”, because the terms do not serve as placeholders for structure or material.

8. Limits on Using Section 112(f) - Example Example limitation where 112(f) is not invoked: “module for processing data, wherein the module is stored in a memory” • The module is described in the specification as software in the form of an algorithm or machine-readable instructions. • In this case, module is not a generic placeholder for a structural element since the module is stored in a memory and therefore is being used to represent only a non-structural element. The non-structural element is software that is a purely functional limitation.

9. Prong A – Means-type claims Prong A is met when the claim language: • Explicitly uses the phrase “means” or • Uses a term as a substitute for “means” that is a generic placeholder (i.e., the term is simply a verbal construct or fails to recite sufficient structure to perform the function) • This substitute term is sometimes referred to as a non-structural nonce word Examples: Means for ink delivery Unit for delivering ink

10. Prong A – Substitute for “means” • For a term to be a substitute for “means” (and lack sufficient structure), it must: • Be a generic placeholder and not limit the scope of the claim to any specific manner/structure for performing the claimed function • There are no absolutes in the determination of terms used as a substitute for “means” • The examiner must carefully consider the term in light of the specification and the accepted meaning in the technology

11. Prong A – Substitute for “means” Claim Limitation: mechanism for delivering ink Specification 1 The mechanism for delivering ink can be a piezoelectric printhead, thermal printhead or laser printhead. Specification 2 The mechanism for delivering ink is preferably a laser printhead. ‘Mechanism’ is used in the claim in a generic manner. One of ordinary skill would understand that ‘mechanism’ is not limited to a specific structure for performing the function. Substitute for “means” Although a preferred embodiment is described, ‘mechanism’ is used in the claim in a generic manner. One of ordinary skill would understand that ‘mechanism’ is not the name for the specific structure for performing the function. Substitute for “means”

12. Prong B – Means-type claims Prong B is met when: • 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 Examples: Means for ink delivery Module for delivering ink

13. Linking Words • It is not required that the transition “for” be used to link “means” or the substitute term to the function • Other linking words can be used, such as “so that”, or “configured for”, provided it is clear that a function is being recited • In certain circumstances, it is also not necessary to use a linking word if other words used convey the function without imparting structure Examples: Ink delivery means Module configured to deliver ink

14. Prong C – Means-type claims Prong C is met when: • The phrase “means” or the generic placeholder is not further modified by sufficient structure or material for performing the claimed function • Examples: • Means for ink delivery • Prong C met - no structural recitation • Ink jet means for ink delivery • Fails Prong C - modified by “ink jet” which is sufficient structure for achieving specified function • Means for ink delivery having an ink delivery tube • Fails Prong C – modified by “tube” which is sufficient structure for achieving specified function

15. Example 1 Means for displaying a result of a search query • Prong A: Explicit recitation of “means” • Prong B: Functional recitation of “for displaying a result of a search query” • Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked

16. Example 2 Means configured to display a result from a search query • Prong A: Explicit recitation of “means” • Prong B: Functional recitation of “configured to display a result from a search query” • Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked

17. Example 3 Module for displaying a result from a search query Specification: the module can be hardware (such as a circuit), software (such as a program driver) or a combination thereof (such as a programmed microprocessing unit) • Prong A: “Module” is being used as a generic placeholder that is a substitute for “means” based on an evaluation of the specification • Prong B: Functional recitation of “for displaying a result from a search query” • Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked

18. Example 4 Displaying means • Prong A: Explicit recitation of “means” • Prong B: A clear function of “displaying” is recited • Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked

19. Example 5 A display means Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen. • Prong A: Explicit recitation of “means” • Prong B: No associated function recited • Prong C: Not applicable because no function recited Fails Prong B: 112(f) NOT invoked

20. Example 6 A display means for displaying a result of a search query Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen. • Prong A: Explicit recitation of “means” • Prong B: Functional recitation of “for displaying a result of a search query” • Prong C: Structure, in the form of a display, is recited to perform the function Fails Prong C: 112(f) NOT invoked

21. Example 7 A display for displaying a result from a search query Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen. • Prong A: No “means” or substitute term • Prong B: Functional recitation of “for displaying a result from a search query” • Prong C: Structure in the form of a display that performs the function Fails Prong A and C: 112(f) NOT invoked

22. Summary • Determine that § 112(f) is invoked when a claim element with functional language uses: • Means or a generic placeholder • Coupled to a function • With no structure to perform the function • Case-by-case basis using claim language, specification, and knowledge in the art as a guide • Treatment of elements that invoke means-plus-function is evolving • Office has sought public input on examination of § 112(f) elements • Examination guidance may be adjusted when appropriate in response to public feedback and judicial developments