2185 Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs [R-10.2019]
Interpretation of claims as set forth in MPEP § 2181 may create some uncertainty as to what the inventor or a joint inventor regards as the invention. If this issue arises, it should be addressed in a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. While 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, permits a particular form of claim limitation, it cannot be read as creating an exception either to the description, enablement or best mode requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph or the definiteness requirement of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Knowlton, 481 F.2d 1357, 178 USPQ 486 (CCPA 1973).
If a means- (or step-) plus-function limitation recited in a claim is not supported by corresponding structure, material or acts in the specification disclosure, the following rejections under 35 U.S.C. 112 should be considered:
- (A) under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not being supported by an enabling disclosure because the person skilled in the art would not know how to make and use the invention without a description of elements to perform the function. Note that the description of an apparatus with block diagrams describing the function, but not the structure, of the apparatus is not fatal under the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as long as the structure is conventional and can be determined without an undue amount of experimentation. In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971);
- (B) under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as lacking adequate written description because the specification 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. As an example, if the means- (or step-) plus-function limitation is computer-implemented, and the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention, see MPEP § 2161.01 and MPEP § 2181, subsection IV, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made; and
- (C) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite. See Noah Systems v. Intuit, 675 F.3d 1302, 1311-19, 102 USPQ.2d 1410, 1415-21 (Fed. Cir. 2012); In re Aoyama, 656 F.3d 1293, 1297-98, 99 U.S.P.Q.2d 1936, 1940 (Fed. Cir. 2011); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41, 86 USPQ2d 1609, 1622-23 (Fed. Cir. 2008); and MPEP § 2181.
The examiner must also consider an application for compliance with the requirements of 35 U.S.C. 101, 35 U.S.C. 102, and 35 U.S.C. 103. When examining the claims under 35 U.S.C. 102 or 103 a determination of whether the prior art anticipates or renders obvious the claimed subject matter, including the means or step that performs the function specified in the claim, must be made. In the situation when there is no corresponding structure, etc., in the specification to limit the means- (or step-) plus- function limitation, an equivalent is any element that performs the specified function.