22 Questions to Deepen Understanding of 112(f) Issues and relation with 112(a) and 112(b)

March 27, 2016

By Tatsuo YABE

Review of Williamson Decision, Post-Williamson decision (Media Rights Tech v. Capital One: Fed Cir. 2015-09-04) and MPEP2181-“112(f)”, revised in November 2015. Also, review interplays among 112(a), 112(b) and 112(f).

1.                      What does 35 U.S.C. 112(f) say?

2.                      Is 35 U.S.C. 112(f) your friend as Applicant?

3.                      What is the Williamson Decision (Fed. Cir. en banc: 2015) about?

Key words:

Ø  E-Learning (distributed learning control module);

Ø  MPF – Means Plus Function under 35 U.S.C. 112(6);

Ø  Presumption (1^st Presumption) of Not Invoking 112(6) interpretation when word “means” is used;

Ø  Presumption (2^nd Presumption) of Invoking 112(6) interpretation when word “means” is not used.

Ø  Which presumption (1^st or 2^nd) is stronger?

Ø  Looking into SPEC to see corresponding structures to perform each of functions recited in claim element;

Ø  What are the structures for software related invention?

Ø  What will be the result in case no corresponding structures are disclosed in the SPEC?

4.                      What is Media Rights decision (post-Williamson decision: Fed. Cir. 2015-09-04) about?  Discuss: Anything other than the holdings by Williamson handed down by Media Rights?

5.                      We understand there are two presumptions in interpretation of MPF type claim limitation in enforcement stage. How about in the prosecution stage?  In other words, does the USPTO also presume in case of no word “means” and/or in case of word “means” used in the claim limitation?

6.                      According to the Williamson decision, under what conditions, the element of claim is interpreted as MPF under 35 U.S.C. 112(f)?  -- Court Interpretation--

7.                      According to the MPEP2181 (revised November 2015), under what conditions, examiner interprets an element of claim as MPF under 35 U.S.C. 112(f)? --USPTO Prosecution stage—

8.                      Are there any discrepancies regarding the conditions for invoking 112(f) between the court and the USPTO?

9.                      What are the notable differences between previous MPEP2181 (March 2014) and the current MPEP2181 (November 2015)?

10.                  When you see the 35 U.S.C. 112(f) issue in the Office Action, what would you do?  Is that a rejection of claims? 

11.                  If you are not happy with the Examiner’s interpretation of the element under 35 U.S.C. 112(f), then what can you do?

12.                  When the Examiner interprets the element of claim under 35 U.S.C. 112(f), then what will be the next step for the Examiner?

13.                  If there are no corresponding structures or steps (to perform the claimed function) disclosed in the specification, what will be the proper rejection?

14.                  What other conditions that will make the 112(b) rejection appropriate when examining MPF claim limitation under 112(f)?

15.                  If the corresponding structures are disclosed only in the material incorporated by reference, then what will happen?

è See 2100-323 (MPEP2181) Does not satisfy 112(b).

16.                  If the corresponding structures are partially disclosed in the specification and the reminders are disclosed in the material incorporated by reference such that one skilled in the art need to rely on both to identify the structure, then what will happen?

17.                  In the case of software related invention, what are the “structures” corresponding to the term of claim under 112(f).

18.                  In view of In re Katz (Fed. Cir. 2011), is a general purpose computer mentioned in the specification sufficient as corresponding structure for performing a general computing function, such as “processing”, “receiving” and “storing”?

19.                  To claim a means for performing a specific computer-implemented function, what must be disclosed in the specification as corresponding structures?

20.                  Further comment in relation with 112, first paragraph

21.                  Are there any benefits of the claim term in MPF form?

22.                  How the “equivalents” under 112(f) relates to the Doctrine of Equivalents?

SAMPLE ANSWERS

March 27, 2016

By Tatsutaro YABE

1.                       What does 35 U.S.C. 112(f) say?

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.

2.                      Is 35 U.S.C. 112(f) your friend as Applicant?

Most of the time, 112(f) is not a good friend to Applicant because the scope of MPF term (element) in the claim is limited to what is disclosed in the spec (and equivalents thereof). Especially in mechanical invention, the MPF term under 112(f) could severely limit its scope. For instance, the scope of the term “means for connecting” in claim 1 is limited to a screw (bolt-nut) and equivalents thereof when the corresponding structure of the “means for connecting” in the Spec/Dwgs is only a screw and a bolt-nut.

3.                      What is the Williamson Decision (Fed. Cir. en banc: 2015) about?

Williamson is an owner of U.S. Patent (USP6,155,840) which relates to a system of E-Learning using an internet to connect audiences and presenters.

-          8. A system for conducting distributed learning among a plurality of computer systems coupled to a network, the system comprising:

a presenter computer….;

a content selection control for ….;

a presenter streaming data…

…..

a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

Williamson is a second Federal Circuit’s en banc decision regarding the MPF interpretation since In re Donaldson (Fed. Cir. en banc 1994).  Williamson is about a decision of the claim term without the word “means”. Also, Williamson clarifies the strength of the presumption of no 112(f) interpretation of the term without the word “means”.

Williamson says that in a case of non-use of the word “means”, there arises a presumption of no interpretation of the term under 112(f).  However, this presumption can be overcome if a challenger proves that the term recites function but does not recite the structural limitations to perform the function recited in the term of claim.

The standard 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. Greenberg, 91 F.3d at 1583. When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Watts, 232 F.3d at 880. The converse presumption remains unaffected: “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.” Personalized Media, 161 F.3d at 703.

Williamson also says that the strength of the presumption A (no word “means” in the claimed element à no 112(f) interpretation) is the same as the strength of the opposite presumption B (the word “means” in the claimed element à 112(f) applies).

SUMMARY of Williamson Decision: (see also a flowchart)

[1A] Word “MEANS” NOT used in claim Element à Presumption of NO 112(f) Interpretation.

The Presumption can be Rebutted If Recitation of Function WITHOUT Structural Limitation in the Element. 

Then, 112(6) Interpretation Applies to the Element.

Look into SPEC to see Corresponding Structures to Perform the Function.

If No such Structures in SPEC, then Claim is Invalid Under 112(2).

[1B] Word “MEANS” Used in claim Element à Presumption of 112(f) Interpretation.

The Presumption can be Rebutted If Recitation of Function WITH Structural Limitation or Recitation of NO-Function in the Element. 

Then, No 112(6) Interpretation Applies to the Element.

Note: Whether Structural limitation performs the Function or not is to be judged in light of Knowledge/Understanding of PHOSIA (当業者).

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[2A] In the case of Software Related Invention:

STEP 1: Word “MEANS” NOT used in claim Element à Presumption of NO 112(6) Interpretation.

STEP 2: The Presumption can be Rebutted If Recitation of Function without Structural Limitation in the Element.  à Then, 112(6) Interpretation Applies to the Element.

STEP 3: Look into SPEC to see if there are Corresponding Structures to Perform the Function.

If the Function cannot be performed by General Purpose Computer, SPEC must disclose “Algorithm” that Perform the Function (i.e., “Algorithm” can be Corresponding Structure.)

              “Algorithm” can be expressed as:

              (i) mathematical formula;

              (ii) Flow Chart; or

              (iii) any other manner providing sufficient structure.

STEP 4: If NO “Algorithm” in SPEC, then Claim Invalid Under 112(2).

[2B] In the case of Software Related Invention:

STEP 1: Word “MEANS” used in claim Element à Presumption of 112(6) Interpretation.

STEP 2: The Presumption can be Rebutted If Recitation of Function with Structural Limitation to Perform the Function or No recitation of Function in the Element.  à Then, No 112(6) Interpretation Applies to the Element.

à Note that if the presumption cannot be rebutted (presumption stays), go to STEP 3 and STEP 4 in [2A].

STEP 3: Then, the Claim Element is interpreted as its Ordinary Meaning in light of Understanding/Knowledge of those PHOSIA.

4.                      What is Media Rights decision (post-Williamson decision: Fed. Cir. 2015-09-04) about?  Discuss: Anything other than the holdings by Williamson handed down by Media Rights?

Major portions of the Media Rights decision confirm the holdings of Williamson decision step by step.  The issue in Media Rights is the claim limitation, “compliance mechanism” recited in all of independent claims 1, 10 and 19 (of USP7,316,033) as to whether this term should be interpreted under 112(f).  The court decided that this term is interpreted under 112(f) although the word “means” is not used in light of Williamson because the word “compliance” is not recognized as a structure in those skilled in the art. 

In independent claims 1, 10 and 19, a total of 4 (four) functions are recited in association with the compliance mechanism, i.e., Functions A and B in claim 1; Functions B, C and D in claim 10; and Functions B and D in claim 19.  The court says that “where a disclosed algorithm supports some, but not all, of the functions associated with a MPF limitation, we treat the SPEC as if no algorithm has been disclosed at all (Noah Sys v. Intuit Inc: Fed. Cir. 2012).  If literally taken this holding, even the structure (algorithm) to perform Function C (recited in only claim 10) is not disclosed in the SPEC, then all of independent claims 1, 10 and 19 (and of course respective dependent claims) are found as indefinite under 112(b). 

It is my opinion that the Fed Cir’s opinion is bit confusing.  Because Noah v. Intuit (Fed. Cir. 2012) did not say so.  Instead, in Noah v. Intuit, there are two functions recited in association with a term “access means” in claim 10, no structure (algorithm) to perform one of the function is not disclosed in the SPEC.  Thus, claim 10 was found indefinite under 112(b). It should, therefore, be understood from Noah. v. Intuit, algorithm must be disclosed in the SPEC with respect to all the functions recited in association with the MPF limitation in the claim in question. In other words, claim by claim analysis must be performed.

5.                      We understand there are two presumptions in interpretation of MPF type claim limitation in the enforcement stage. How about in the prosecution stage?  In other words, does the USPTO also presume in case of no word “means” and/or in case of word “means” used in the claim limitation?

Yes, the PTO presumes no invocation of 112(f) when no use of the word “means” in the claim limitation and the PTO presumes invocation of 112(f) when the word “means” is used in the claim limitation. à 2100-317

6.                      According to the Williamson decision, under what conditions, the element of claim is interpreted as MPF under 35 U.S.C. 112(f)?  -- Court Interpretation--

See above.

Claim element recites function without structural limitation to perform the function.

7.                      According to the MPEP2181 (revised November 2015), under what conditions, examiner interprets an element of claim as MPF under 35 U.S.C. 112(f)? --USPTO Prosecution stage--

Examiner will apply 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph to a claim limitation if it meets the following 3-Prong Analysis:

·         (Prong 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;

Examples of Generic Placeholder: mechanism for..; module..; device..; unit..; component..; element..; member..; apparatus..; machine..; system.. (à 2100-313)

·         (Prong 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";

Examples for linking word: for..; configured to..; so that…; and in certain circumstance also not necessary to use a linking word but if other words used with means convey the function (à 2100-316); and

·         (Prong C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.

8.                      Are there any discrepancies regarding the conditions for invoking 112(f) between the court and the USPTO?

1^st prong of the PTO’s analysis seems to be questionable..! For instance, think about the claim limitation such as “a controller for coordinating the operation of the streaming data”.  112(f) interpretation invoked or not…?

9.                      What are the notable differences between previous MPEP2181 (March 2014) and the current MPEP2181 (November 2015)?

In view of Williamson decision, the following paragraph (MPEP2181: March 2014) was deleted.

By contrast, a claim limitation that does not use the term “means” or “step” will trigger the rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35U.S.C. 112, sixth paragraph does not apply. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1310,75 USPQ2d 1321, 1324 (Fed. Cir. 2005) (en banc); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d1359, 1369, 62 USPQ2d 1658, 1664 (Fed. Cir.2002); Personalized Media Commc’ns, LLC v. ITC,161 F.3d 696, 703-04, 48 USPQ2d 1880, 1886–87(Fed. Cir. 1998). This presumption is a strong one that is not readily overcome. Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358,72 USPQ2d 1344, 1348 (2004); Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F.3d1350, 1356, 99 USPQ2d 1112, 1117 (Fed. Cir.2011).

Other than the above, no major changes in the section of MPEP2181.

10.                  When you find the 35 U.S.C. 112(f) issue in the Office Action, what would you do?  Is that a rejection of claims? 

If the Examiner’s interpretation of the term as MPF under 112(f) is unreasonable, then it is worthwhile to argue against the Examiner’s wrong interpretation of the term under 112(6). (See below 3 Prong Test!) However, if the Examiner’s assertion (MPF interpretation) is not unreasonable, then no response is necessary because the Examiner’s indication of interpretation of claim terms under 112(f) in the Office Action is not rejection. However, if non-response would exclude a competitor’s product from falling into scope of claim, then consider amending claim element, if possible or add new claim that would encompass the competitor’s product into its scope.

11.                  If you are not happy with the Examiner’s interpretation of the element under 35 U.S.C. 112(f), then what would be the effective way to rebut the examiner’s interpretation?

Argue against the Examiner’s interpretation by asserting that there is no word “means” or placeholder for “means” in the term of claim in question. à Prong A is not met.

Assert that the claim term does not recite function. à Prong B is not met.

Argue against the Examiner’s interpretation by asserting that the claim term includes the structural limitation that is commonly recognized by those skilled in the art which performs the recited function in the claim element. à Prong C is not met.

For instance, [1] the specification provides a description sufficient to inform those skilled in the art that the term denotes structure; [2] dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and [3] the prior art provides evidence that the term has an art-recognized structure to perform the claimed function. – The standard is whether the words of the claim are understood by those skilled in the art to have a sufficiently definite meaning as the name of for structure. à2100-317

12.                  When the Examiner interprets the claim element under 35 U.S.C. 112(f), then what will be the next step for the Examiner to do?

The next step is to find corresponding structures disclosed in the SPEC which perform the function recited in the claim limitation.

13.                  If there are no corresponding structures or steps disclosed in the specification, what will be the proper rejection?

If there are no corresponding structures (or steps) in the SPEC to the element recited in the claim in question, then it will be deemed as failing to meet the requirements under 35 U.S.C. 112(b).  Then, the claim element is deemed as indefinite and the claim as a whole is considered indefinite under 112(b).  As a result, the claim in question is considered invalid.

Note where the SPEC does not disclose corresponding structures that perform the recited functions of claim element, then it is highly likely that the requirement of Written Description under 112(a) is not met because an indefinite functional limitation would cover all features of performing a function, thus the SPEC does not describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.

14.                  What other conditions that will make the 112(b) rejection appropriate when examining MPF claim limitation under 112(f)?

  [1] when it is not clear whether a claim limitation invokes 112(f)?

  [2] when 112(f) is invoked and there is no disclosure or there is insufficient disclosure of structure for performing the claimed function (see above);

  [3] when 112(f) is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure to the claimed function. à 2100-323, 324

15.                  If the corresponding structures are disclosed only in the material incorporated by reference, then what will happen?

à 2100-323 (MPEP2181) -- does not satisfy requirement under 112(b).

16.                  If the corresponding structures are partially disclosed in the specification and the reminders are disclosed in the material incorporated by reference such that one skilled in the art need to rely on both to identify the structure, then what will happen?

à2100-325 (MPEP2181)

Applicant will be required to amend the spec to contain the material incorporated by reference which includes the clear link or associated structure recited in claim.  However, Applicant should not be required to insert all of the subject matter described in the entire referenced document into the specification.

17.                  In the case of software related invention, what are the “structures” corresponding to the term of claim under 112(f).

The “structure” under 112(f) for software related invention is “algorithm” which includes a flowchart, mathematic expressions, and/or explanation in the specification.

18.                  In view of In re Katz (Fed. Cir. 2011), is a general purpose computer mentioned in the specification sufficient as corresponding structure for performing a general computing function, such as “processing”, “receiving” and “storing”?

YES!

19.                  To claim a means for performing a specific computer-implemented function, what must be disclosed in the specification as corresponding structures?

à 2100-320, 321

In this instance, the corresponding structure must include the algorithm needed to transform the general purpose computer to the special purpose computer so that those skilled in the art can implement the disclosed algorithm to achieve the claimed function.

The sufficiency of the algorithm is determined in view of what those skilled in the art would understand.

20.                  Further comment in relation with 112(a)?

àSee MPEP2181-IV. 2100-325

DETERMINING WHETHER 35 U.S.C. 112(a) SUPPORT EXISTS

A MPF limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure that performs the claimed function may also lack adequate written description and/or not be sufficiently enabled to support the full scope of the claim.

The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and MPF claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection under section 112(b) and a failure to satisfy the written description and enablement requirements under section 112(a).

The Federal Circuit has recognized the problem of providing a sufficient disclosure for functional claiming, particularly with generic claim language, explaining that “The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But 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.” Ariad Pharmaceuticals Inc. v. Eli & Lilly Co.1171 (Fed. Cir. 2010) (en banc).

Thus, the MPF claims must still be analyzed to determine whether there exists corresponding adequate support for such claim under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In considering whether there is 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph support for the claim limitation, the examiner must consider not only the original disclosure contained in the summary and detailed description of the invention portions of the specification, but also the original claims, abstract, and drawings.

21.                  Are there any benefits of the claim term in MPF form?

Because the scope of MPF element under 112(f) is limited to what is described in the spec and equivalents thereof, it is easier to get allowability.  The narrower the scope of claim is, the easier to distinguish from the prior art references.

If there are two sets of claims in a single application, namely a MPF claim set form and a Non-MPF set, then the accused infringer will have a tough time interpreting the scope each claim (because of “Claim Differentiation Theory”), thereby more difficult to invalidate the patent.

Even the MPF claim element was narrowly amended during the prosecution, the scope of equivalents under 112(f) are still available. Because, the scope of claim element under 112(f) including “equivalents thereof” is considered to be a literal scope thereof. Note that under FESTO decision, when the claim element was narrowly amended, it is most likely that the DOE is not applicable to the element. 

22.                  How the “equivalents” under 112(f) relates to the Doctrine of Equivalents?

SUMMARY of Williamson Decision:

Whether 112(f) interpretation applies to element of claim

Whether the MPF element meets 112(b)