1. UNITED STATES PATENT AND TRADEMARK OFFICE A full transcript of this presentation can be found under the Notes Tab. 35 USC 112 (f)*: Identifying Limitations That Invoke 112(f) * 35 USC 112, 6 th paragraph for cases filed before 9/16/2012

2. UNITED STATES PATENT AND TRADEMARK OFFICE 2 Topics Overview of 112(f) for Means-type Claims Builds on 2011 § 112 Supplemental Guidelines and Training The 3-Prong Analysis Examples 2

3. UNITED STATES PATENT AND TRADEMARK OFFICE 3 Purpose of Refresher Training To reinforce 2011 § 112 training on tools to set boundaries for functional claim language Topic of 2013 Software Partnership Roundtables Ongoing public discussion regarding clear claim boundaries 3

4. UNITED STATES PATENT AND TRADEMARK OFFICE Importance of Identifying 112(f) Limitations Governs broadest reasonable interpretation of the claim limitation Prevents potential over assertion of claims 4

5. UNITED STATES PATENT AND TRADEMARK OFFICE 112(f) Overview 3-prong Analysis for Means-type Claims Following MPEP 2181(I), a claim limitation should be interpreted according to 112(f) if it meets the following 3- prong analysis: A. The claim limitation uses the phrase means or a term used as a substitute for means that is a generic placeholder; B. The phrase means or the substitute term is modified by functional language, typically linked by the transition word for (e.g., means for) or another linking word; and C. The phrase means or the substitute term is not modified by sufficient structure or material for performing the claimed function 5

6. UNITED STATES PATENT AND TRADEMARK OFFICE The term means with functional language raises a rebuttable presumption that the claim element is to be treated under § 112(f) The presumption is rebutted when the function is recited with sufficient structure or material within the claim itself to entirely perform the recited function 112(f) Presumption for Means 6

7. UNITED STATES PATENT AND TRADEMARK OFFICE Absence of the term means with functional language raises a rebuttable presumption that the claim element is not to be treated under § 112(f) The presumption is rebutted when the claim element (1) recites a generic placeholder for structure or material; (2) recites a function; and (3) does not recite sufficient structure or material to perform the function. Terms that represent only non-structural elements such as information, data, instructions, and software per se would not serve as substitutes for means, because the terms do not serve as placeholders for structure or material. 112(f) Presumption in the Absence of Means 7

8. UNITED STATES PATENT AND TRADEMARK OFFICE Example limitation where 112(f) is not invoked: module for processing data, wherein the module is stored in a memory The module is described in the specification as software in the form of an algorithm or machine-readable instructions. In this case, module is not a generic placeholder for a structural element since the module is stored in a memory and therefore is being used to represent only a non- structural element. The non-structural element is software that is a purely functional limitation. Limits on Using Section 112(f) - Example 8

9. UNITED STATES PATENT AND TRADEMARK OFFICE 9 Prong A – Means-type claims Prong A is met when the claim language: Explicitly uses the phrase means or Uses a term as a substitute for means that is a generic placeholder (i.e., the term is simply a verbal construct or fails to recite sufficient structure to perform the function) This substitute term is sometimes referred to as a non-structural nonce word Examples: Means for ink delivery Unit for delivering ink 9

10. UNITED STATES PATENT AND TRADEMARK OFFICE 10 Prong A – Substitute for means For a term to be a substitute for means (and lack sufficient structure), it must: Be a generic placeholder and not limit the scope of the claim to any specific manner/structure for performing the claimed function There are no absolutes in the determination of terms used as a substitute for means The examiner must carefully consider the term in light of the specification and the accepted meaning in the technology 10

11. UNITED STATES PATENT AND TRADEMARK OFFICE 11 Prong A – Substitute for means Claim Limitation: mechanism for delivering ink Specification 1 The mechanism for delivering ink can be a piezoelectric printhead, thermal printhead or laser printhead. Mechanism is used in the claim in a generic manner. One of ordinary skill would understand that mechanism is not limited to a specific structure for performing the function. Substitute for means 11 Specification 2 The mechanism for delivering ink is preferably a laser printhead. Although a preferred embodiment is described, mechanism is used in the claim in a generic manner. One of ordinary skill would understand that mechanism is not the name for the specific structure for performing the function. Substitute for means

12. UNITED STATES PATENT AND TRADEMARK OFFICE 12 Prong B – Means-type claims Prong B is met when: The phrase means or the substitute term is modified by functional language, typically linked by the transition word for (e.g., means for) or another linking word Examples: Means for ink delivery Module for delivering ink 12

13. UNITED STATES PATENT AND TRADEMARK OFFICE 13 Linking Words It is not required that the transition for be used to link means or the substitute term to the function Other linking words can be used, such as so that, or configured for, provided it is clear that a function is being recited In certain circumstances, it is also not necessary to use a linking word if other words used convey the function without imparting structure Examples: Ink delivery means Module configured to deliver ink 13

14. UNITED STATES PATENT AND TRADEMARK OFFICE 14 Prong C – Means-type claims Prong C is met when: The phrase means or the generic placeholder is not further modified by sufficient structure or material for performing the claimed function Examples: Means for ink delivery Prong C met - no structural recitation Ink jet means for ink delivery Fails Prong C - modified by ink jet which is sufficient structure for achieving specified function Means for ink delivery having an ink delivery tube Fails Prong C – modified by tube which is sufficient structure for achieving specified function 14

15. UNITED STATES PATENT AND TRADEMARK OFFICE 15 Example 1 Means for displaying a result of a search query Prong A: Explicit recitation of means Prong B: Functional recitation of for displaying a result of a search query Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked 15

16. UNITED STATES PATENT AND TRADEMARK OFFICE 16 Example 2 Means configured to display a result from a search query Prong A: Explicit recitation of means Prong B: Functional recitation of configured to display a result from a search query Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked 16

17. UNITED STATES PATENT AND TRADEMARK OFFICE 17 Example 3 Module for displaying a result from a search query Specification: the module can be hardware (such as a circuit), software (such as a program driver) or a combination thereof (such as a programmed microprocessing unit) Prong A: Module is being used as a generic placeholder that is a substitute for means based on an evaluation of the specification Prong B: Functional recitation of for displaying a result from a search query Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked 17

18. UNITED STATES PATENT AND TRADEMARK OFFICE 18 Example 4 Displaying means Prong A: Explicit recitation of means Prong B: A clear function of displaying is recited Prong C: No structure that performs the function Meets 3-prong analysis: 112(f) invoked 18

19. UNITED STATES PATENT AND TRADEMARK OFFICE 19 Example 5 A display means Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen. Prong A: Explicit recitation of means Prong B: No associated function recited Prong C: Not applicable because no function recited Fails Prong B: 112(f) NOT invoked 19

20. UNITED STATES PATENT AND TRADEMARK OFFICE 20 Example 6 A display means for displaying a result of a search query Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen. Prong A: Explicit recitation of means Prong B: Functional recitation of for displaying a result of a search query Prong C: Structure, in the form of a display, is recited to perform the function Fails Prong C: 112(f) NOT invoked 20

21. UNITED STATES PATENT AND TRADEMARK OFFICE 21 Example 7 A display for displaying a result from a search query Specification: the display is described in accordance with its common understanding in the art, specifically as a computer monitor or video screen. Prong A: No means or substitute term Prong B: Functional recitation of for displaying a result from a search query Prong C: Structure in the form of a display that performs the function Fails Prong A and C: 112(f) NOT invoked 21

22. UNITED STATES PATENT AND TRADEMARK OFFICE 22 Summary Determine that § 112(f) is invoked when a claim element with functional language uses: Means or a generic placeholder Coupled to a function With no structure to perform the function Case-by-case basis using claim language, specification, and knowledge in the art as a guide Treatment of elements that invoke means-plus-function is evolving Office has sought public input on examination of § 112(f) elements Examination guidance may be adjusted when appropriate in response to public feedback and judicial developments 22