Updated Patent Examining Guidelines (2011)
Friday, March 25, 2011
PDF Version of this Article with Flowcharts
Summary: USPTO patent examination guidelines published in the Federal Register (Vol. 76, No. 27, Feb. 9, 2011) apply to all applications filed before, on or after February 9, 2011. The stated objective is to enhance the quality of patent by issuing less ambiguous claims. Particular emphasis is placed on meeting the requirements of 35 USC 112. The guidelines also single out “computer-implemented invention claims” as an area of additional concern. This document seeks to provide a useful distillation of what patent examiners are analyzing.
The Examination Process:
The guidelines set forth a three (3) stage process.
I. Broadest Reasonable Interpretation:
During examination a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Key points:
1) Interpret under “ordinary skill” standard;
2) Words in claim given plain meaning unless specification contradicts;
3) Specification should be a “glossary” for claim terms;
4) Infringement interpretation of claims is different from examination;
5) Courts will not find claim indefinite unless it is “insolubly ambiguous”; and
6) Examiner should not confuse claim breath with indefiniteness.
Example: A genus claim that covers multiple species is broad, but is not indefinite because of its breath, which is otherwise clear.
II. Determining Whether Claim Language is Definite
A decision on whether a claim is indefinite under §112, ¶2 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Certain areas frequently generate questions of indefiniteness:
Functional Claiming: A claim term is functional when it recites a feature by what it does rather than by what it is.
1. Nothing per se wrong with functional claiming – authorized by §112, ¶6 (means-plus-function).
2. Problem with functional claims – without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means of methods of resolving the problem may be encompassed by the claim.
Functional Claiming That Did NOT Pass Muster:
· A tungsten filament for incandescent lamps with the limitation providing “comparatively large grains of such size and contour as to prevent substantial sagging or offsetting during a normal or commercially useful life for such a lamp or other device.” Problem: “size and contour” not adequately defined….indefinite!
· “…pure carbon black in the form the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior.’’ Problem: “commercially uniform” meant only the degree of uniformity desired by the buyer. Also spongy and porous not helpful adjectives in distinguishing prior art.
Functional Claiming That Did Pass Muster:
· “transparent to infrared rays” was OK because the specification shows the IR rays passed through even though degree of transparency varied.
Author Comment Functional claiming is common is biotechnology application (e.g., the binding thus effecting apoptosis in the target cell…). Functional claiming in the “unpredictable art” of oncology requires careful analysis of the clinical results which hopefully span an appropriate number of conditions to achieve enablement of the claim limitation.
3. Non-exclusive test for patent examiners to determine if functional language is ambiguous:
a. Clear cut indication of the scope of the subject matter covered by the claim?
b. Well-defined boundaries of invention or only states a problem solved or result obtained?
c. Would structure of steps encompassed by claims be apparent to one of ordinary skill in the art?
4. Suggestions to Patent Drafters:
a. Use quantitative metrics (i.e., “an aperture 10 to 20 cm in diameter” rather than “a large hole”)
b. Employ a formula for calculating a property (i.e., “an aperture 6 to 12 percent of the housing length”)
c. Provide general guidelines and examples in the specification itself (i.e., “the aperture must be large enough to accommodate a flow of the oil expelled at 2,000 liters per minute while maintaining a PSI under 200.”)
d. Be prepared the amend the claims to recite a particular structure that accomplishes the function.
Terms of Degree: When a term of degree is used in a claim, the patent examiner must check the specification to see if there is guidance on how to measure that degree. For example, a specification might even define small, medium and large (i.e,. small apertures, those between 2-3mm; medium apertures, those between 3-6mm; and large apertures, those over 6mm may be deployed in various embodiments of the invention…). Examiner analysis:
Subjective Terms: Examiner must determine whether specification supplies some standard for measuring the scope of the term (similar to analysis for degree above). A claim that requires subjective judgment without restriction may render the claim indefinite.
Subjective Claiming That Did NOT Pass Muster:
· A computer interface screen with an “aesthetically pleasing look and feel.”
Markush Groups: A “Markush” claim recites a list of alternatively useable species (i.e., a fruit selected from the group consisting of apples, oranges and grapes).
Improper Markush claims:
1. A Markush group so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention (reject as indefinite).
2. “Improper Markush grouping”
a. The species of the group do not share a “single structural similarity”; or
b. The species do not share a common use.
Proper Markush claim examples:
1. Same recognized physical or chemical class;
2. Same art-recognized class; and
3. Share a common use when functionality equivalent.
Examiners are advised to require the Applicant to elect a species or group of indistinct species for search and examination and the examiner’s search extended to the species that share a single structural similarity and common use.
1. Must be rejected under §112, ¶4 if it omits an element from the claim upon which it depends; or
2. Fails to add a limitation to the claim upon which it depends.
Author Comment Under the proposed patent reform, the PTO will have fee-setting authority and it clearly disfavors excessive dependent claims. Patent practitioners should carefully consider each dependent claim and whether is provides both a commercially viable limitation as well as meaningful claim differentiation.
Correspondence Between Specification and Claims:
Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.
· The exact claim terms are not required to be used in the specification as long as the specification provides the needed guidance on the meaning of the terms (e.g.,
· Applicants are encouraged to use glossaries as a best practice in patent application preparation.
Means Plus Function Claim Limitations: If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes §112, ¶6 (means-plus-function).
Author Comment From a patent value and infringement standpoint, means-plus-function limitations are generally disfavored. For example, if the limitation was “means for conducting the electrical current” and the patent specification only disclosed an aluminum conductor, then the anti-corrosive properties of aluminum cannot be imported into the claim since the function claimed was electrical conduction. A better limitation would have been to claim the structure and not its function (e.g., “an electrical conductor”).
The analysis for determining means-plus-function:
Examiners will apply §112, ¶6 to a claim limitation that meets the following conditions:
· The claim limitation uses the phrase ‘‘means for’’ or ‘‘step for’’ or a non-structural term that does not have a structural modifier;
· the phrase ‘‘means for’’ or ‘‘step for’’ or the non-structural term recited in the claim is modified by functional language; and
· the phrase ‘‘means for’’ or ‘‘step for’’ or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function.
It is important to note this guideline modifies existing MPEP §2181. If unclear about whether §112, ¶6 is invoked, patent examiners are instructed to find the limitation indefinite under §112, ¶2.
Preamble: When the phrase “means for” or “step for” is used in the preamble:
· Find indefinite under §112, ¶2 if unclear whether the preamble recites a means-plus-function or is simply stating the intended use of the invention.
If Means-Plus-Function Found….What’s Next?
· Determine the claimed function
· Review the specification to determine whether the corresponding structure, material or acts that perform the claimed function are disclosed.
· Does written description of specification clearly link or associate the corresponding structure, material or acts to the claimed function? If not, reject under §112, ¶2.
o Examiners can also issue a requirement for information under 37 CFR 1.105 wherein the applicant must identify the corresponding structure material or acts that support the means-plus-function claim.
· How about statement in specification that known techniques or methods can be used to achieve the function? Not enough to support means-plus-function limitation. Reject under §112, ¶2.
Means-Plus-Function in Computer-Implemented Inventions:
· Corresponding structure in specification must be more than a general purpose computer.
· Must include algorithm that transforms the general purpose computer to a special purpose computer.
· What can serve as algorithm?
o Mathematical formula;
o Flow chart; or
o Any other manner that provides sufficient structure.
· Vague terms patent examiners will look for as a basis for rejection:
o Merely referencing a specialized computer (e.g., a “bank computer”)
o Undefined components of a computer system:
§ “access control manager”
· For pure software claims the specification must have a corresponding algorithm and the computer or microprocessor programmed with the algorithm.
III. Resolving Indefinite Claim Language
A. Examiner must establish a Clear Record. See MPEP §2173.05 for example rationales. Avoid making mere conclusions.
B. Examiner must set forth the specific term or phrase that is indefinite and why the metes and bounds are unclear.
C. Examiner should only be concerned whether claim meets threshold requirements of clarity and precision….not whether more suitable language or modes of expression of available. Examiner may suggest but not reject in these circumstances.
When claim limitation is indefinite, examiner should make their best interpretation, issue the §112, ¶2 rejection, and analyze the limitation (according to their interpration) against the prior art. Interviews are highly encouraged.
Conclusion and Recommendations
The revised examination guidelines are not a radical departure from traditional practice. However, patent practitioners should take note of the following key points:
1. Use glossaries in the patent specification
2. Avoid means-plus-function language (claim structures, not functions)
3. Use quantitative limitations over qualitative whenever possible
4. Computer-implemented invention claims have unique requirements