IP Alerts

January 11, 2019

On January 7, contemporaneously with the release of guidance addressing the analysis of patent eligibility under 35 U.S.C. § 101, the USPTO issued guidance that addresses requirements presented by 35 U.S.C. § 112 regarding computer-implemented functional claim limitations. Unlike the patent-eligibility guidance, which presents a new examination procedure, the section 112 examination guidance doesn't introduce something new but presents a consolidation of existing practices that are now more clearly bound by common points of concern, inquiry, and vocabulary.

Section 112 explicitly permits a claim to include a purely functional claim expression rather than a recitation of structure to accomplish that function. This statutory provision specifies that such a practice is invoked by presenting a “means” for accomplishing a stated function. In such a case, section 112 then further states that such a claim limitation shall be interpreted as the structure described in the specification as accomplishing the claimed function. The section 112 guidance attempts to clarify not only the foregoing, but also make these points:

• A functional claim recitation that includes the word “means” may nevertheless be interpreted without invoking the functional claim language provisions of section 112 if the claim recitation also includes sufficient structure to accomplish the stated function.
• A functional claim recitation that does not include the word “means” but which does not otherwise include sufficient structure to accomplish the stated function may nevertheless be interpreted as though it did include the word “means” if the function is accomplished by a “non-structural generic placeholder” (such as a mechanism, module, device, unit, component, element, member, apparatus, system, or machine). (The Manual of Patent Examination Procedure refers to such words as “nonce” words.)
• Notwithstanding the foregoing list of suspect words, there is no fixed list of words that always result in treating the claim limitation as a “means” limitation, and conversely there is no fixed list of words that guarantee exclusion from such treatment (“every case will turn on its own unique set of facts”).
• The specification must include an algorithm that fully accomplishes the entire claimed computer-implemented function regardless of whether the claimed function is being interpreted as a “means” expression or not.
• One suitable definition of an algorithm is “a finite sequence of steps for solving a logical or mathematical problem or performing a task” and an algorithm can be satisfactorily expressed in any understandable terms including as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.
• While things that are well known in the art need not be described in detail, it is still necessary to present structure in the specification to accomplish the claimed function when the function is interpreted as being accomplished by a “means” or its equivalent.
• The applicant cannot merely rely upon the knowledge of one skilled in the art to substitute for a description of structure, and the guidance further cautions that an applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art.

While this guidance does not necessarily break any new ground, it may well prove useful (both for patent examiners as well as patent applicants) in prompting more-consistent analysis and treatment of claims that include functional claim expressions.

Hazarding a guess, the author suspects that the patent-eligibility guidance mentioned above will lead to a reduction in the number of applications that face serious patent-eligibility problems, but this section 112 guidance will likely lead to an increase in the number of applications that face serious challenges based on the contents of the specification (or, perhaps more accurately, based on the lack of contents in the specification).

The guidance is effective immediately and applies to all pending and newly filed applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019.

For more information, please contact Fitch Even partner Steven G. Parmelee, author of this alert.
 

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