U.S. Patent & Trademark Office Circulates Supplementary Patent Examination Guidelines Regarding Definiteness of Claim Language
On February 9, 2011, the U.S. Patent & Trademark Office (USPTO) issued Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications (the “Guidelines”). The Guidelines have immediate effect, but the USPTO will consider written comments received by April 11, 2011. Part 1 of the Guidelines pertains to the provisions of 35 U.S.C. § 112, 2 regarding claim definiteness, while Part 2 of the Guidelines pertains to the examination of so-called “computer-implemented functional claim limitations.”
In Part 1 of the Guidelines, a 3-step process is described for the examination of patent claims under 35 U.S.C. § 112, 2. Step 1 begins with an interpretation of the claims. The Guidelines emphasize that examiners must assign a “broadest reasonable interpretation” to claim terms that is consistent with the patent specification and reasonable from the perspective of “one of ordinary skill in the art.” Step 2 focuses on determining whether the claims as interpreted are “definite” and “clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” Examples of indefinite claiming include: 1) “functional claiming” that recites a feature “by what is does rather than what it is,” 2) “terms of degree” which fail to include “some standard for measuring that degree,” 3) “subjective terms” for which the scope “must depend solely on the unrestrained, subjective opinion of a particular individual” and 4) “improper Markush groups” which define a number of different “species” of the claim term that fail to share either a “single structural similarity” or a “common use.” Step 2 also provides guidelines for interpreting so-called “means for” and “step for” limitations under 35 U.S.C. § 112, 6.
Step 3 concludes the examination process with guidelines for resolving any indefinite claim language identified in step 2. The Guidelines make clear that it is the examiner’s duty to provide a “sufficient explanation” of the indefinite language as part of a “clear record,” and to practice the principles of “compact [patent] prosecution” so that “the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity.” Notably, examiners are encouraged to attempt to resolve indefiniteness issues with the patent applicant early on by interview before formally rejecting the patent application on indefiniteness and other grounds.
Part 2 of the Guidelines addresses examination issues such as functional claiming as they relate to “computer-implemented inventions.” In an invention claimed using functional language, the so-called “written description” requirements of 35 U.S.C. § 112, 1 are not met when patent specification fails to “sufficiently identify how the invention achieves the claimed function.” For computer-implemented inventions, the Guidelines specify that a “determination of sufficiency “must be applied both to the disclosed hardware as well as the disclosed software. A sufficient disclosure will describe “the computer and the algorithm (e.g., the necessary steps and/or flowcharts) [ ] in sufficient detail such that one of ordinary skill in the art [ ] would know how to program the disclosed computer to perform the necessary steps.” With reference to prior art rejections of computer-implemented inventions based on 35 U.S.C. §§ 102, 103, Part 2 warns that “functional claim language that is not limited to a specific structure [will cover] all devices that are capable of performing the recited function.” For example, if the structure claimed is simply a “computer,” any known computing device capable of performing the claimed function will satisfy this claim element. Part 2 also notes that claims that are simply directed to a computer and claim no more than the implementation of a known function on a computer will not be patentable.
The Guidelines break little new ground with regard to current examination practice. It appears that they may be directed to emphasize the examination of patent claims for compliance under 35 U.S.C. § 112 early on during prosecution, and to provide a template for examination that can facilitate dialogue between the examiner and the patent applicant with regard to indefiniteness issues. Part 2 of the Guidelines complements Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, issued by the USPTO on July 27, 2010 as a guide to subject matter eligibility for process claims under 35 U.S.C. § 101.