September 13, 2008
Going Down the 112 Way
Following up on his §101 ramble, USPTO policy maven John Love put out the hard word in a memo duet on §112: ¶2 indefiniteness for numeric imprecision, and for means claims, which nominally fall under ¶6.
The CAFC noted that claims were held indefinite in circumstances where a claim (1) recites a means-plus-function limitation without disclosing corresponding structure in the specification; (2) includes a numeric limitation without disclosing which of multiple methods of measuring that number should be used; (3) contains a term that is completely dependent on a person's subjective opinion; and (4) if a term does not have proper antecedent basis where such basis is not otherwise present by implication or the meaning is not reasonably ascertainable. The common thread, in all these circumstances is that claims are found indefinite only where a person of ordinary skill in the art could not determine the metes and bounds of the claims? If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation then a rejection of the claim under 35 U.S.C. 112, second paragraph, is appropriate. Where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, examiner should reject the claim as indefinite under 35 U.S.C. 112, second paragraph, and should reject the claim over the prior art based on the interpretation of the claim that renders the prior art applicable. Any rejection under 35 U.S.C. 112, second paragraph, should include an analysis as to why the language, phrase(s) and term(s) used render the claim vague and indefinite.
Footnotes of case law and MPEP citation omitted.
A rejection under 35 U.S.C. 112, second paragraph, may be appropriate in the following situations when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph:
(I) When it is unclear whether a claim limitation invokes 35 U.S.C. 112, sixth paragraph;
(II) When there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function; and/or
(III) When applicant fails to clearly link or associate the disclosed structure, material, or acts to the claimed fuuction.
From: Clarke, Robert (OPLA)
Sent: Wednesday, September 03, 2008 8:32 AM
To: Patent Assistant/Deputy Comm; Patent Directors
Cc: Doll, John; Focarino, Margaret (Peggy); Love, John; Dougherty, Elizabeth; Le, Nancy (Off of the Comm for Patents); Wiley, David; Fleming, Michael R. @ BOAI; Chen, Ray; Greenlief, Magdalen; Bahr, Robert; Hutzell, Paula; Pearson, Charles; Hanlon, Brian; Chang, Joni; Weiss, Joseph; Johnson, Sydney; Rankin Byrne, Jennifer
Subject: Memorandums Regarding 35 USC 112, Second and Sixth Paragraphs
The following memorandums, appended, have been signed by John Love on September 2, 2008:
1. Indefiniteness rejections under 35 U.S.C. 112, second paragraph; and
2. Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph.
Please forward the memorandums to the patent examiners and other examining staffs in your technology centers. The memorandums will be posted on the USPTO Internet (public) Web site later this week or early next week.
Robert A. Clarke
Office of Patent Legal Administration - USPTO
(v) 571 272 7735
Posted by Patent Hawk at September 13, 2008 10:28 PM | Prosecution
OK, this is a great time to raise this deep, vital 112 question once again:
Why didn't the Congressional donkeys and mules drafting 112 label their paragraphs with the traditional, time-tested style of 112(a), 112(b), etc. . . . ? I mean, it seems to work for 102 and 103, and every other federal law.
How much aggregate time do tens of thousands of patent professionals and 4000 examiners waste every year (not to mention the gallons of ink) with "112 second paragraph," "112 first paragraph," etc.
Is there some way we can tag Dudas with this idiocy?
Posted by: Babel Boy at September 15, 2008 8:47 AM