[Federal Register Volume 64, Number 146 (Friday, July 30, 1999)]
[Notices]
[Pages 41392-41394]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-19368]
[[Page 41392]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No: 990406087-9087-01]
RIN 0651-ZA03
Interim Supplemental Examination Guidelines for Determining the
Applicability of 35 U.S.C. 112 para. 6
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The Patent and Trademark Office (PTO) requests comments from
the public regarding interim supplemental examination guidelines to be
used by office personnel in their review of patent applications to
determine when 35 U.S.C. 112 para. 6 should be applied to a given claim
limitation.
DATES: The interim supplemental examination guidelines are effective
July 30, 1999.
Written comments on the interim supplemental examination guidelines
will be accepted by the PTO until September 28, 1999.
ADDRESSES: Written comments should be addressed to the attention of
Magdalen Greenlief, Box Comments, Assistant Commissioner for Patents,
Washington, DC 20231 or to Ray Chen, Office of the Solicitor, P.O. Box
15667, Arlington, Virginia 22215, or by facsimile transmission to (703)
305-8825, or by electronic mail at magdalen.greenlief@uspto.gov or
ray.chen@uspto.gov.
Written comments will be made available for public inspection in
Suite 910, Crystal Park 2, 2121 Crystal Drive, Arlington, Virginia
22202. In addition, comments provided in machine readable format will
be available through the PTO's Website at http://www.uspto.gov.
FOR FURTHER INFORMATION CONTACT: Magdalen Greenlief, Box Comments,
Assistant Commissioner for Patents, Washington, DC 20231 or Ray Chen,
Office of the Solicitor, P.O. Box 15667, Arlington, Virginia 22215, or
by facsimile transmission to (703) 305-8825, or by electronic mail at
magdalen.greenlief@uspto.gov or ray.chen@uspto.gov.
SUPPLEMENTARY INFORMATION: The following interim supplemental
examination guidelines are being published for public comment. In May
1994, the PTO issued guidelines implementing the change in examination
practice necessitated by the Federal Circuit's decision in In re
Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994)(en banc).
Since Donaldson, several decisions by the Federal Circuit have
analyzed: (1) When a particular claim limitation invokes 35 U.S.C. 112
para. 6; and (2) the duty of the applicant to describe the
corresponding structure, material, or acts that perform the function
recited in a means-plus-function limitation. In order to clarify these
issues, the PTO is issuing these interim supplemental examination
guidelines to assist PTO personnel in the examination of patent
applications to determine: (1) Whether a claim limitation invokes 35
U.S.C. 112 para. 6; and (2) whether the written description adequately
describes the corresponding structure, material, or acts needed to
support a claim limitation under 35 U.S.C. 112 para. 6.
It has been determined that these interim supplemental examination
guidelines are not a significant rule for purposes of Executive Order
12866. Because these supplemental examination guidelines are
interpretive rules and general statements of policy, they are exempt
from notice and comment rulemaking under 5 U.S.C. 553(b)(A). The
collection of information for the filing and processing of a patent
application has been reviewed and previously approved by the Office of
Management and Budget under the following control numbers: 0651-0031
and 0651-0032. These supplemental examination guidelines involve no
additional collection of information subject to the Paperwork Reduction
Act, 44 U.S.C. ch. 35. Notwithstanding any other provision of law, no
person is required to respond nor shall a person be subject to a
penalty for failure to comply with a collection of information subject
to the requirements of the Paperwork Reduction Act unless that
collection of information displays a currently valid OMB Control
Number.
Members of the public may present written comments on these
supplemental examination guidelines. Written comments should include
the following information:
--Name and affiliation of the individual responding; and
--An indication of whether the comments offered represent views of the
respondent's organization or are the respondent's personal views.
The PTO is particularly interested in comments relating to the 3-
prong analysis as to when a claim limitation will be interpreted by PTO
personnel to invoke 35 U.S.C. 112 para. 6. The PTO is also interested
in comments relating to the analysis as to when a ``means-'' (or
``step-'') plus-function claim limitation satisfies the requirements of
35 U.S.C. Sec. 112 para. 2.
I. Interim Supplemental Examination Guidelines for Claims Subject
to 35 U.S.C. 112 para. 6
In February 1994, the Court of Appeals for the Federal Circuit
(Federal Circuit) held in an en banc decision that ``the 'broadest
reasonable interpretation' that an examiner may give means-plus-
function language is that statutorily mandated in [35 U.S.C. 112 para.
6] * * * [T]he PTO may not disregard the structure disclosed in the
specification corresponding to such language when rendering a
patentability determination.'' In re Donaldson Co., 16 F.3d 1189, 1194-
95, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). In May 1994, the
PTO issued guidelines implementing changes in examination practice in
response to Donaldson. See Means or Step Plus Function Limitation Under
35 U.S.C. Sec. 112, para. 6; Notice, 1162 Off. Gaz. Pat. Office 59 (May
17, 1994) (``1994 Guidelines'').
The 1994 Guidelines note that there is no ``magic'' language that
invokes 35 U.S.C. 112 para. 6.\1\ However, to establish uniformity to
the extent possible, in view of the recent case law, and to make the
prosecution record clear, these interim guidelines supplement the 1994
Guidelines in assisting examiners to determine when 35 U.S.C. 112 para.
6 should be applied. To the extent these supplemental guidelines are
inconsistent with the 1994 Guidelines, the supplemental guidelines are
controlling.
The PTO must apply 35 U.S.C. 112 para. 6 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.\2\ Thus, a claim limitation will be interpreted to invoke
35 U.S.C. 112 para. 6 if it meets the following 3-prong analysis:
(1) the claim limitations must use the phrase ``means for'' or
``step for''; \3\
(2) the ``means for'' or ``step for'' must be modified by
functional language; \4\ and
(3) the phrase ``means for'' or ``step for'' must not be modified
by structure, material or acts for achieving the specified function.\5\
With respect to the first prong of this analysis, a claim element
that does not include the phrase ``means for'' or ``step for'' will not
be considered to invoke 35 U.S.C. 112 para. 6. If an applicant wishes
to have the claim limitation treated under 35 U.S.C. 112 para. 6,
applicant must either: (1) Amend the claim to include the phrase
``means for'' or ``step for'' in accordance with these interim
[[Page 41393]]
guidelines; or (2) show that even though the phrase ``means for'' or
``step for'' is not used, the claim limitation is written as a function
to be performed and does not provide any structure, material, or acts
which would preclude application of 35 U.S.C. 112 para. 6.\6\
Accordingly, these interim guidelines provide applicants with the
opportunity to either invoke or not invoke 35 U.S.C. 112 para. 6 based
upon a clear and simple set of criteria.
II. Procedures for Determining Whether the Written Description
Adequately Describes the Corresponding Structure, Material, or Acts
Necessary To Support a Claim Limitation Which Invokes 35 U.S.C. 112
para. 6
If a claim limitation invokes 35 U.S.C. 112 para. 6, it must be
interpreted to cover the corresponding structure, materials, or acts in
the specification and ``equivalents thereof.'' \7\ If the written
description fails to set forth the supporting structure, material or
acts corresponding to the means- (or step-) plus-function, the claim
may not meet the requirement of 35 U.S.C. 112 para. 2:
Although [35 U.S.C. 112 para. 6] 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 [35 U.S.C. 112 para.
2].\8\
Whether a claim reciting an element in means- (or step-) plus-
function language fails to comply with 35 U.S.C. 112 para. 2 because
the specification does not disclose adequate structure (or material or
acts) for performing the recited function is closely related to the
question of whether the specification meets the description requirement
in 35 U.S.C. 112 para. 1.\9\ However, 35 U.S.C. 112 para. 6 does not
impose any requirements in addition to those imposed by 35 U.S.C. 112
para. 1.\10\ Conversely, the invocation of 35 U.S.C. 112 para. 6 does
not exempt an applicant from compliance with 35 U.S.C. 112 Paras. 1 and
2.\11\
The written description does not have to explicitly describe the
structure (or material or acts) corresponding to a means- (or step-)
plus-function limitation to particularly point out and distinctly claim
the invention as required by 35 U.S.C. 112 para. 2.\12\ Rather,
disclosure of structure corresponding to a means-plus-function
limitation may be implicit in the written description if it would have
been clear to those skilled in the art what structure must perform the
function recited in the means-plus-function limitation.\13\ However,
the claims must still be analyzed to determine whether there exists
corresponding adequate support for such claim under 35 U.S.C. 112 para.
1.\14\
Therefore, a means-(or step-) plus-function claim limitation
satisfies 35 U.S.C. 112 para. 2 if: (1) The written description links
or associates particular structure, materials, or acts to the function
recited in a means-(or step-) plus-function claim limitation; or (2) it
is clear based on the facts of the application that one skilled in the
art would have known what structure, materials, or acts perform the
function recited in a means- (or step-) plus-function limitation.
37 CFR 1.75(d)(1) provides, in part, that ``the terms and phrases
used in the claims must find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may be
ascertainable by reference to the description.'' In the situation in
which the written description only implicitly or inherently sets forth
the structure, materials, or acts corresponding to a means- (or step-)
plus-function, and the examiner concludes that one skilled in the art
would recognize what structure, materials, or acts perform the function
recited in a means- (or step-) plus-function, the examiner should
either: (1) Have the applicant clarify the record by amending the
written description such that it expressly recites what structure,
materials, or acts perform the function recited in the claim
element;\15\ or (2) state on the record what structure, materials, or
acts perform the function recited in the means- (or step-) plus-
function limitation.
In implementing the change in examination practice necessitated by
Donaldson, the PTO set forth a two-step process for making a prima
facie case of equivalence of a prior art element during ex parte
examination. First, the examiner must find that the prior art element
performs the function specified in the claim element, and, second, the
examiner must find that the prior art element is not excluded by any
explicit definition provided in the specification for an
equivalent.\16\ This two-step process is not superseded by these
interim supplemental guidelines, and is consistent with the requirement
that the PTO give claims their broadest reasonable interpretation.\17\
The specification need not describe the equivalents of the structures,
materials, or acts corresponding to the means- (or step-) plus-function
claim element.\18\ Where, however, the specification is silent as to
what constitutes equivalents, the burden is placed upon the applicant
to show that a prior art element which performs the claimed function is
not an equivalent of the structure, material, or acts disclosed in the
specification.\19\
Endnotes
\1\ See 1994 Guidelines at 59.
\2\ See In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845,
1850 (Fed. Cir. 1994) (en banc) (stating that 35 U.S.C. 112 para. 6
``merely sets a limit on how broadly the PTO may construe means-
plus-function language under the rubric of `reasonable
interpretation' ''). The Federal Circuit has held that applicants
(and reexamination patentees) before the PTO have the opportunity
and the obligation to define their inventions precisely during
proceedings before the PTO. See In re Morris, 127 F.3d 1048, 1056-
57, 44 USPQ2d 1023, 1029-30 (Fed. Cir. 1997) (35 U.S.C. 112 para. 2
places the burden of precise claim drafting on the applicant); In re
Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)
(manner of claim interpretation that is used by courts in litigation
is not the manner of claim interpretation that is applicable during
prosecution of a pending application before the PTO); Sage Products
Inc. v. Devon Industries Inc., 126 F.3d 1420, 1425, 44 USPQ2d 1103,
1107 (Fed. Cir. 1997) (patentee who had a clear opportunity to
negotiate broader claims during prosecution but did not do so, may
not seek to expand the claims through the doctrine of equivalents,
for it is the patentee, not the public, who must bear the cost of
its failure to seek protection for this foreseeable alteration of
its claimed structure). Thus, applicants and reexamination patentees
before the PTO have an opportunity and obligation to specify,
consistent with these supplemental guidelines, when a claim
limitation invokes 35 U.S.C. 112 para. 6.
\3\ Cf. Seal-Flex, Inc. v. Athletic Track and Court
Construction, 172 F.3d 836, 849-50, 50 USPQ2d 1225, 1233-34 (Fed.
Cir. 1999) (Radar, J., concurring) (use of the phrase ``step for''
in a method claim raises a presumption that 35 U.S.C. 112 para. 6
applies, whereas, use of the word ``step'' by itself or the phrase
``step of'' does not invoke a presumption that 35 U.S.C. 112 para. 6
applies); Ethicon, Inc. v. United States Surgical Corp., 135 F.3d
1456, 1463, 45 USPQ2d 1545, 1550 (Fed. Cir. 1998) (``use of the word
`means' gives rise to `a presumption that the inventor used the term
advisedly to invoke the statutory mandates for means-plus-function
clauses' ''); O.I. Corp. v. Tekmar, 115 F.3d 1576, 1583, 42 USPQ2d
1777, 1782 (Fed. Cir. 1997) (method claim that paralleled means-
plus-function apparatus claim but lacked ``step for'' language did
not invoke 35 U.S.C. 112 para. 6). Thus, absent an express
recitation of ``means for'' or ``step for'' in the limitation, the
broadest reasonable interpretation will not be limited to
``corresponding structure * * * and equivalents thereof.'' Cf.
Morris, 127 F.3d at 1055, 44 USPQ2d at 1028 (``no comparable mandate
in the patent statute that relates the claim scope of non-Sec. 112
para. 6
[[Page 41394]]
claims to particular matter found in the specification'').
\4\ See York Prod., Inc. v. Central Tractor Farm & Family
Center, 99 F.3d 1568, 1574, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996)
(holding that a claim limitation containing the term ``means'' does
not invoke 35 U.S.C. 112 para. 6 if the claim limitation does not
link the term ``means'' to a specific function).
\5\ See Seal-Flex, 172 F.3d at 849, 50 USPQ2d at 1234 (Radar,
J., concurring) (``Even when a claim element uses language that
generally falls under the step-plus-function format, however, 112
para. 6 still does not apply when the claim limitation itself
recites sufficient acts for performing the specified function'').
Cf. Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1303-04,
50 USPQ2d 1429, 1435-36 (Fed. Cir. 1999) (holding ``positioning
means for moving'' does not invoke 35 U.S.C. 112, para. 6 because
the claim further provides a list of the structure underlying the
means and the detailed recitation of the structure for performing
the moving function removes this element from the purview of 35
U.S.C. 112, para. 6); Cole v. Kimberly-Clark Corp., 102 F.3d 524,
531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996) (holding ``perforation
means * * * for tearing'' does not invoke 35 U.S.C. 112 para. 6
because the claim describes the structure supporting the tearing
function (i.e., perforation)). In other cases, the Federal Circuit
has held otherwise. See Unidynamics Corp. v. Automatic Prod. Int'l,
157 F.3d 1311, 1319, 48 USPQ2d 1099, 1104 (Fed. Cir. 1998) (holding
``spring means'' does invoke 35 U.S.C. 112 para. 6). During
examination, however, applicants have the opportunity and the
obligation to define their inventions precisely, including whether a
claim limitation invokes 35 U.S.C. 112 para. 6. Thus, if the phrase
``means for'' or ``step for'' is modified by structure, material or
acts for achieving the specified function, the PTO will not apply 35
U.S.C. 112 para. 6 until such modifying language is deleted from the
claim limitation. See also supra note 1.
\6\ While traditional ``means for'' or ``step for'' language
does not automatically make an element a means-(or step-) plus-
function element, conversely, lack of such language does not prevent
a limitation from being construed as a means-(or step-) plus-
function limitation. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d
1352, 1356, 50 USPQ2d 1372, 1374-75 (Fed. Cir. 1999) (``ink delivery
means positioned on * * *'' invokes 35 U.S.C. 112 para. 6 since the
phrase ``ink delivery means'' is equivalent to ``means for ink
delivery''); Al-Site Corp. v. VSI International Inc., 174 F.3d 1308,
1318, 50 USPQ2d 1161, 1166-67 (Fed. Cir. 1999) (although the claim
elements ``eyeglass hanger member'' and ``eyeglass contacting
member'' include a function, these claim elements do not invoke 35
U.S.C. 112 para. 6 because the claims themselves contain sufficient
structural limitations for performing those functions); Seal-Flex,
172 F.3d at 849, 50 USPQ2d at 1234 (Radar, J., concurring) (``claim
elements without express step-plus-function language may
nevertheless fall within 112 para. 6 if they merely claim the
underlying function without recitation of acts for performing that
function * * * In general terms, the `underlying function' of a
method claim element corresponds to what that element ultimately
accomplishes in relationship to what the other elements of the claim
and the claim as a whole accomplish. `Acts,' on the other hand,
correspond to how the function is accomplished.); Personalized Media
Communications LLC v. ITC, 161 F.3d 696, 703-04, 48 USPQ2d 1880,
1886-87 (Fed. Cir. 1998); Mas-Hamilton Group v. LaGard Inc., 156
F.3d 1206, 1213, 48 USPQ2d 1010, 1016 (Fed. Cir. 1998) (``lever
moving element for moving the lever'' and ``movable link member for
holding the lever * * * and for releasing the lever'' were construed
as means-plus-function limitations invoking 35 U.S.C. 112 para. 6
since the claimed limitations were described in terms of their
function not their mechanical structure).
\7\ See 35 U.S.C. 112 para. 6. See also B. Braun Medical, Inc.
v. Abbott Lab., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1899 (Fed. Cir.
1997).
\8\ See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; see also
B. Braun Medical, 124 F.3d at 1425, 43 USPQ2d at 1900; and In re
Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884-85 (Fed. Cir. 1997).
\9\ See In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA
1976) (unless the means-plus-function language is itself unclear, a
claim limitation written in means-plus-function language meets the
definiteness requirement in 35 U.S.C. 112 para. 2 so long as the
specification meets the written description requirement in 35 U.S.C.
112 para. 1).
\10\ See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492-
93 (CCPA 1973).
\11\ See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850;
Knowlton, 481 F.2d at 1366, 178 USPQ at 493.
\12\ See Dossel, 115 F.3d at 946, 42 USPQ2d at 1885. Under
proper circumstances, drawings may provide a written description of
an invention as required by 35 U.S.C. para. 112. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir.
1991).
\13\ See Dossel, 115 F.3d at 946-47, 42 USPQ2d at 1885
(``Clearly, a unit which receives digital data, performs complex
mathematical computations and outputs the results to a display must
be implemented by or on a general or special purpose computer
(although it is not clear why the written description does not
simply state `computer' or some equivalent phrase.)'').
\14\ In considering whether there is 35 U.S.C. 112 para. 1
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. See In re Mott, 539
F.2d 1291, 1299, 190 USPQ 536, 542-43 (CCPA 1976) (claims); In re
Anderson, 471 F.2d 1237, 1240, 176 USPQ 331, 333 (CCPA 1973)
(claims); In re Armbruster, 512 F.2d 676, 678-79, 185 USPQ 152, 153-
54 (CCPA 1975) (abstract); Anderson, 471 F.2d at 1240, 176 USPQ at
333 (abstract); Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1564, 19
USPQ2d at 1117 (drawings); In re Wolfensperger, 302 F.2d 950, 955-
57, 133 USPQ 537, 541-43 (CCPA 1962) (drawings).
\15\ Even if the disclosure implicitly sets forth the structure,
materials, or acts corresponding to a means-(or step-) plus-function
claim element in compliance with 35 U.S.C. 112 Paras. 1 and 2, the
PTO may still require the applicant to amend the specification
pursuant to 37 CFR 1.75(d) and MPEP 608.01(o) to explicitly state,
with reference to the terms and phrases of the claim element, what
structure, materials, or acts perform the function recited in the
claim element. See 35 U.S.C. 112 para. 6 (``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.'' (emphasis added)); see also
B. Braun Medical, 124 F.3d at 1424, 43 USPQ2d at 1900 (holding that
``pursuant to this provision [35 U.S.C. 112 para. 6], 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. This duty to
link or associate structure to function is the quid pro quo for the
convenience of employing 112, paragraph 6.''); Wolfensperger, 302
F.2d at 955, 133 USPQ at 542 (just because the disclosure provides
support for a claim element does not mean that the PTO cannot
enforce its requirement that the terms and phrases used in the
claims find clear support or antecedent basis in the written
description).
\16\ See Means or Step Plus Function Limitation Under 35 U.S.C.
112, para. 6; 1162 Off. Gaz. Pat. Office at 59-60.
\17\ See Donaldson, 16 F.3d at 1194, 29 USPQ2d at 1850 (stating
that 35 U.S.C. 112 para. 6 ``merely sets a limit on how broadly the
PTO may construe means-plus-function language under the rubric of
`reasonable interpretation' '').
\18\ See Noll, 545 F.2d at 149-50, 191 USPQ at 727 (the meaning
of equivalents is well understood in patent law, and an applicant
need not describe in his specification the full range of equivalents
of his invention) (citation omitted). Cf. Hybritech Incorporated v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986) (``a patent need not teach, and preferably omits,
what is well known in the art'').
\19\ See 1994 Guidelines at 60; see also In re Mulder, 716 F.2d
1542, 1549, 219 USPQ 189, 196 (Fed. Cir. 1983).
Dated: July 21, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of
Patents and Trademarks.
[FR Doc. 99-19368 Filed 7-29-99; 8:45 am]
BILLING CODE 3510-16-P
