2. Examining Functional Claim Limitations: Focus on Computer/Software-related Claims
May 2015
This USPTO Legal Training Module will cover the topic of interpreting functional claim terms and making the record clear regarding claim clarity. This sixth installment of training on claim interpretation and claim clarity will focus on the interpretation of functional claim terms when 35 USC 112(f) is not invoked. The previous five modules focused on claim interpretation in general and the interpretation of claim limitations that invoked 35 U.S.C. 112(f)(pre-AIA 112, 6th paragraph). This module focuses on clarifying claim scope when functional claim terms that are not governed by 35 USC 112(f) are used. More detailed guidance on functional claim terms can be found at MPEP sections , , and (g). This module will emphasize how interpretation of functional claim terms is critical for not only properly applying prior art, but also for providing clear boundaries of claim scope so that patent owners and the public can understand a given patent’s scope of protection.

3. Goals
Providing a clear prosecution record by explaining the claim interpretation of functional claim limitations
Ensuring claim scope is properly determined when construing/ examining functional claim limitations that are not governed by 35 USC 112(f)
Ensuring claims that use functional limitations have clear boundaries
The goals of this training focus on the public notice function of patent claims. When clear boundaries are established for claim coverage, risk of infringement can be reduced because competitors are on clear notice of what subject matter is covered by the patent. Clear boundaries also notifies the public of protected subject matter.
These goals can be achieved by providing a clear prosecution record by explaining the claim interpretation of functional claim limitations, ensuring claim scope is properly determined when construing/examining functional claim limitations that are not governed by 35 USC 112(f), and ensuring claims that use functional limitations have clear boundaries.
One goal of this training is to review techniques for claim interpretation when functional claim terms are used. When claim scope is made clear in the prosecution record, the public is put on notice as to the scope of granted claims. This permits inventors operating in the same or similar technology area to understand what subject matter is patented and what is in the public domain.
Another goal is directed to understanding how to construe and examine functional language that falls outside of 112(f). A solid foundation of claim construction enables the examiner and applicant to reach a common understanding of the meaning of functional claim terms.
The final stated goal recognizes that clarity in the prosecution record will provide a level of certainness regarding how the agency is interpreting a specific term in a claim, here namely functional claim terms.
As previously stated, this is the 6th installment on claim interpretation. The previous 5 modules dealt with claim interpretation in general and applying 112(f) in the context of means plus function claiming. This module will focus on the interpretation and examination of functional claim terms.

4. Clarity
Clarity of claim limitations in granted patents is improved when the interpretation is explained in Office actions
Early clarification by the examiner of claim limitations will help applicant clarify the meaning, amend the claim, or provide a more effective response to any prior art rejections, as well as lead to more efficient prosecution
The prosecution record will provide a map for the public to understand the boundaries of the patent protection and provide clear notice of patent rights
The PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean
By explicitly identifying the meaning of a claim term during prosecution, the meaning of such a term is clarified in the granted patent because the record will reflect the mutual understanding of the scope and content of the claim reached by the examiner and the applicant.
By explaining on the record the meaning of a claim term, the examiner can focus prosecution so that applicant can provide a clear response to any prior art rejections as well as any rejections based on issues arising under 35 USC 112.
By clarifying claim scope on the record during patent prosecution, the public, including competitors, will have a better understanding of the patent protection granted, which can spur innovation in areas beyond the scope of protection.
Additionally, discussions of claim construction in the prosecution record will inform the PTAB and the courts as to how the examiner and the applicant, in procuring the patent, viewed the claim terms at the time of grant. Providing claim interpretations on the record during prosecution can also assist the courts in their claim construction tasks during litigation.

5. Examining Functional Claim Limitations
Part I: Interpreting Functional Claim Limitations
Determine the broadest reasonable interpretation (BRI) of the claim, including identifying and construing functional claim limitations
Understand difference between functional limitations and:
Intended use or result, and
Non-functional descriptive material
Part II: Determining Patentability of Claims including Functional Claim Limitations
Definiteness
Written Description and Enablement
Prior Art
It is important to note that every claim must be analyzed based on its own facts and that there are no bright line rules in claim construction
This training module will be presented in two parts. The first part is directed to interpreting functional claim limitations and the second part is directed to determining patentability of claims that include functional claim limitations. Under interpreting functional claim limitations, similar to examination, we will start with determining the broadest reasonable interpretation (BRI) of the claim, including identifying and construing functional claim limitations. It is important in construing functional limitations to understand the difference between functional limitations and phrases expressing an intended use or result, and non-functional descriptive material because the claim interpretation can vary.
In Part II, determining patentability, we will review common issues that arise during examination of functional claim limitations regarding definiteness under 35 USC 112(b),
written description and enablement under 35 USC 112(a), and applying prior art under 35 USC 102 and As always during examination, while legal principles will be discussed during this training, it is important to note that every claim must be analyzed based on its own facts and that there are no bright line rules in claim construction.
It should be assumed during this training module that functional language is referring to situations in which 35 USC 112(f) is not invoked, unless explicitly stated otherwise.
Also during this training, partial claims are used to illustrate teaching points. Of course, during examination, the entire claim must be considered when determining the broadest reasonable interpretation.

6. Interpreting Functional Claim Limitations

7. Identify Functional Claim Limitations
A claim limitation is functional when it recites a feature by what it does rather than by what it is
The use of functional language does not, by itself, render a claim improper
Often functional language is used to tie claim elements together or to provide context
A functional limitation must be evaluated like any other limitation for what it conveys to one of ordinary skill in the art
As a first step, functional limitations should be identified. A claim limitation is functional when it recites a feature by what it does rather than by what it is.
Claims often use functional language to add further description to some structure or action. Functional language is also often used to explain how elements or steps tie together or to provide context to claim elements. The use of functional language in a claim does not, by itself, render a claim improper.
Functional language must be evaluated like any other claim limitation for what it conveys to one of ordinary skill in the art. When establishing the broadest reasonable interpretation of a claim, all words must be considered and evaluated for what, if any, limits they impose on the claim scope.

8. Use of Functional Claim Limitations
Typically, functional language is used in a claim limitation as follows:
“Means-plus-function” limitations, which are functional limitations authorized by 35 USC 112(f) (or pre-AIA 35 USC 112, sixth paragraph) OR
Recited with some structure, material or action to define a particular capability or purpose served by the recited structure, material or action
MPEP 2181 & 2111
Typically, functional language is used in a claim limitation in two ways. One way is as “means-plus-function” limitations, which are functional limitations authorized by 35 USC 112(f) (or pre-AIA 35 USC 112, sixth paragraph). These types of limitations are covered in the first four modules in this series and can be found on the website under Examiner Guidance and Training.
The other way functional language is typically used is when it is recited with some structure, material or action to define a particular capability or purpose served by that recited structure, material or action.
A simple example is a cup with a spout. This can be defined using structural terms as “a cup having a rim with an outwardly extending V-shaped section.” It could also be defined using functional terms as “a cup having a rim shaped to facilitate pouring a stream of liquid.” In the latter case, the shape of the rim structure is further described by the function it is designed to perform.
In rare circumstances, functional language can also be used without invoking 112(f) or without any recitation of structure, material or actions. In these situations, it is necessary to ensure that the boundaries of the claim limitation can be understood.
As we will discuss during this training, understanding the boundaries of a limitation that uses functional language is critical to proper claim interpretation and, in turn, proper application of prior art.
See MPEP 2181 & 2111 for more information on these two types of functional claiming.

9. Construing Functional Claim Limitations
During examination claims are given their broadest reasonable interpretation (BRI) in light of the specification as it would be interpreted by one of ordinary skill in the art
An examiner’s determination regarding the interpretation of functional claim language will be highly dependent upon the limitation’s contextual use, therefore it is critical to look to the words of the claim and the specification for a proper interpretation
All words in a claim must be considered in judging the patentability of the claim language - including functional claim limitations
No claim limitations can be ignored, but not all limitations will provide a patentable distinction
Explaining claim interpretation on the record will make the claim scope afforded during prosecution clear, for example by clarifying how prior art is applied or why claims define over the prior art
MPEP 2111
During examination, claims are given their broadest reasonable interpretation (BRI) in light of the specification as it would be interpreted by one of ordinary skill in the art. This is explained in detail in MPEP 2111.
For functional claim language, an examiner’s determination regarding interpretation will be highly dependent upon the limitation’s contextual use, therefore it is critical to look to the words of the claim and the specification for a proper interpretation.
All words in a claim must be considered in judging the patentability of the claim language - including functional claim limitations. That means that no claim limitations can be ignored. However, not all limitations will provide a patentable distinction over the prior art. That is one reason that explaining claim interpretation on the record will make the claim scope afforded during prosecution clear. For example, indicating whether a limitation is considered to provide a patentable distinction will clarify how prior art is applied or why claims define over the prior art.

10. Limits Imposed by Functional Claim Language
Functional language can impose limits on claim scope and must be considered when construing a claim
When 112(f) is invoked, the BRI of the “means-plus- function” limitation is restricted to the structure in the supporting disclosure and its equivalents
When 112(f) is not invoked and an element is recited along with a function, that element is construed as being capable of performing the function – in other words, the BRI of that element is limited by the function
When functional language is recited in a claim without connection to any structure, material or acts, it raises issues of whether the boundaries of the claim limitation can be understood and whether any limits are imposed by the language
Functional language can impose limits on claim scope and must be considered when construing a claim. Referring back to the two most typical uses of functional language, when 112(f) is invoked, the BRI of the “means-plus-function” limitation is restricted to the structure in the supporting disclosure that performs the function and its equivalents. When 112(f) is not invoked and an element is recited along with a function, that element is construed as being capable of performing the function – in other words, the BRI of that element is limited by the function. Also as noted previously, in the rare situations in when functional language is recited in a claim without connection to any structure, material or acts, it raises issues of whether the boundaries of the claim limitation can be understood and whether any limits are imposed by the functional language. (Review Talking Points)

11. Construing Functional Claim Limitations - Example
Consider this example claim limitation:
input terminals ‘coupled to receive’ first and second input variables
‘Coupled to receive’ is a description of the function of the terminals
Taking the words of the claim in view of the specification, the limitation specifies no particular connection and is properly interpreted as broadly “capable of receiving” the variables
The words of the claim do not impose any structural requirement regarding the function in terms of specific input or connection
The description and drawings show no structural connection for the input terminals
The BRI is: input terminals capable of receiving first and second input variables; thus, the functional language limits the type of input terminals to those having that capability
Consider this example claim limitation: input terminals ‘coupled to receive’ first and second input variables . In this case, 112(f) is not invoked. The functional limitation is ‘coupled to receive’ because it is a description of the function of the terminals. Taking the words of the claim in view of the specification, the limitation specifies no particular connection for the terminals and they are properly interpreted as broadly “capable of receiving” the variables. In analyzing this limitation note that the words of the claim do not impose any structural requirement regarding the function in terms of specific input or connection. Also, in this case, the description and drawings show no structural connection for the input terminals. So, the BRI of this limitation is: input terminals capable of receiving first and second input variables. Thus, the functional language limits the type of input terminals to those having that capability. This example is drawn from In re Translogic Tech. Inc., 84 USPQ2d 1929 (Fed. Cir. 2007).

12. Construing Functional Claim Limitations - Example
Consider this example claim limitation:
…aesthetic circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals
“Circuitry” in this case connotes structure
The functional language adds further structural limits by describing the operation of the circuit.
The input is “appearance signals” produced by the scanner,
The objective is to “interactively introduce aesthetically desired alterations into the appearance signals”, and
The output is “modified appearance signals”.
The BRI is limited to circuitry that is capable of interactively introducing aesthetically desired alterations into appearance signals to produce modified appearance signals
Consider this example claim limitation: …aesthetic circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals. In this case, 112(f) is not invoked. The term “circuitry” in this case connotes structure. The functional language adds further structural limits by describing the operation of the circuit. The input is “appearance signals” produced by the scanner, the objective is to “interactively introduce aesthetically desired alterations into the appearance signals”, and the output is “modified appearance signals”. The BRI is limited to circuitry that is capable of interactively introducing aesthetically desired alterations into appearance signals to produce modified appearance signals. This example is drawn from Massachusetts Institute of Technology v Abacus Software, 80 USPQ2d 1225 (Fed. Cir. 2006).

13. Intended Use or Result
Intended use or result can appear in a preamble or in the body of the claim
There is a distinction between reciting a function compared to reciting an intended use or result
A functional limitation can provide a patentable distinction by imposing limits on the function of a structure, material or action
Typically no patentable distinction is made by an intended use or result unless some structural difference is imposed by the use or result on the structure or material recited in the claim, or some manipulative difference is imposed by the use or result on the action recited in the claim
Now turning from a functional limitation to an recitation of intended use or result –
An intended use or result can appear in a preamble or in the body of the claim. There is a distinction between reciting a function compared to reciting an intended use or result. A functional limitation can provide a patentable distinction by imposing limits on the function of a structure, material or action. However, typically no patentable distinction is made by an intended use or result unless some structural difference is imposed by the use or result on the structure or material recited in the claim, or some manipulative difference is imposed by the use or result on the action recited in the claim.

14. Intended Use in the Preamble
Determining whether a preamble limits a claim is made on a case- by-case basis in light of the facts of each case
Generally, preamble recitations of purpose, intended use or result do not limit a claim
The general guideposts for when a preamble limits the claim include:
A preamble that is necessary to give “life, meaning and vitality” to the claim, i.e., words that add context for claim construction may limit the claim
A preamble that recites, and thereby limits, the structure of the claimed invention
A preamble that provides antecedent basis for a limitation in the body of the claim
A preamble recitation that is relied upon during prosecution to distinguish the claimed invention from the prior art
MPEP
Often, preambles include an intended use, such as “a widget for use in playing ping-pong.” As explained in detail in MPEP , determining whether a preamble limits a claim is made on a case-by-case basis in light of the facts of each case. Generally, preamble recitations of purpose, intended use or result do not limit a claim. The general guideposts for when a preamble limits the claim include:
- A preamble that is necessary to give “life, meaning and vitality” to the claim, i.e., words that add context for claim construction may limit the claim.
- A preamble that recites, and thereby limits, the structure of the claimed invention.
- A preamble that provides antecedent basis for a limitation in the body of the claim.
A preamble recitation that is relied upon during prosecution to distinguish the claimed invention from the prior art.
Of course, every claim will turn on its own particular facts and for that reason it is important to consider all the words in the claim and the entire prosecution record.

15. Intended Use in the Preamble
Consider the following claim preamble:
A method for verifying the accuracy of logical-to-physical mapping software designed for testing memory designed for testing memory devices, said method comprising:
The body of the claim includes the following limitation:
comparing said fail memory locations…to said various predetermined memory locations to verify the accuracy of logical-to-physical mapping software
While the underlined recitation is expressed in terms of an intended purpose in the preamble, the inclusion of almost the same language in the body of the method claim prompts further consideration of the limiting effect of the preamble language
In this case, the underlined purpose in the preamble was considered to be limiting since it refers to the “essence of the invention” and provides criteria by which the “comparing” limitation is analyzed
Consider the following claim preamble:
A method for verifying the accuracy of logical-to-physical mapping software designed for testing memory designed for testing memory devices, said method comprising:
The body of the claim includes the following limitation:
comparing said fail memory locations…to said various predetermined memory locations to verify the accuracy of logical-to-physical mapping software
The underlined recitation “for verifying the accuracy of logical-to-physical mapping software” is expressed in terms of an intended purpose in the preamble. The body of this method claim includes almost the same language. This should prompt further consideration of whether the preamble language has a limiting effect. In this case, the underlined purpose in the preamble was considered to be limiting since it refers to the “essence of the invention” and provides criteria by which the “comparing” limitation in the body of the claim is analyzed. This example is drawn from In re Jasinski, 107 USPQ2d 2082 (Fed. Cir. 2013) (nonprecedential).

16. Intended Use in the Body of the Claim
An intended use recitation that appears in the body of a claimed apparatus generally does not impart a patentable distinction if it merely states an intention
An intended use recitation in the body of a claim is a description of how the claimed apparatus is to be used
… a server that generates an encrypted message for use in a secure transmission
In this case, a server capable of generating an encrypted message will meet this limitation, regardless of whether the message is used in a secure transmission
Such intended use limitations would not distinguish a claimed apparatus from a prior art apparatus that satisfies all the structural limitations of the claimed apparatus
Clarification could be added to an Office action explaining that the intended use did not impose any limit on the interpretation of the claim
MPEP
Now consider an intended use recited in the body of a claim.
An intended use recitation that appears in the body of a claimed apparatus generally does not impart a patentable distinction if it merely states an intention. An intended use recitation in the body of a claim is a description of how the claimed apparatus is to be used, such as:
… a server that generates an encrypted message for use in a secure transmission
In this case, a server capable of generating an encrypted message will meet this limitation, regardless of whether the message is used in a secure transmission.
Such intended use limitations would not distinguish a claimed apparatus from a prior art apparatus that satisfies all the structural limitations of the claimed apparatus. To assist in clarifying the record, remarks could be added to an Office action explaining that the intended use did not impose any limit on the interpretation of the claim.
See MPEP for further information.

17. Intended Result in the Body of the Claim
An intended result recitation in a claim is a description of what necessarily happens as a result of the structure or actions recited in the claim
Its limiting effect must be determined on a case-by-case basis
The following scenarios recite the intended result of preventing data theft:
If the recited structure or actions are recited with sufficient detail to achieve the claimed result, the recitation of the intended result adds no further limits on the claim
… a server that generates an encrypted message whereby data theft is prevented
The server is recited along with the function of generating an encrypted message. As a result of that function, data theft is prevented. The whereby clause in this case does not add a further limitation to the recited server.
If the recited structure or actions are recited with some detail to achieve the claimed result, the claim element would be construed as an element capable of obtaining the result (through any means)
…a server programmed so that data theft is prevented
The only limitation on the server is that it be programmed (in any way) to be capable of obtaining the result of preventing data theft.
If the recited structure or actions are not recited with sufficient detail to achieve the claimed result, the claim element would not be limited by a mere expression of intended result
…a server whereby data theft is prevented
There are no limits recited on how the server is structured or how it functions to prevent data theft. Therefore, the whereby clause does not add a further limitation to the claim and would not provide a patentable distinction.
If it is argued that the result should be given patentable weight, the boundaries of the limitation would need to be clearly defined. If the intended result limitation is necessary to understand the claim and the boundaries are not clear, the claim would be indefinite.
Intended results are also sometimes recited in a claim.
An intended result recitation in a claim is a description of what necessarily happens as a result of the structure or actions recited in the claim. Its limiting effect must be determined on a case-by-case basis. The following scenarios recite claim limitations that include the intended result of preventing data theft:
In the first scenario, the recited structure or actions are recited with sufficient detail to achieve the claimed result. Thus, the recitation of the intended result adds no further limits on the claim.
… a server that generates an encrypted message whereby data theft is prevented
In this case, the server is recited along with the function of generating an encrypted message. As a result of that function, data theft is prevented. The whereby clause in this case does not add a further limitation to the recited server.
In the second scenario, the recited structure or actions are recited with some detail to achieve the claimed result. Thus, the claim element would be construed as an element capable of obtaining the result (through any means).
…a server programmed so that data theft is prevented
In this case, the only limitation on the server is that it be programmed (in any way) to be capable of obtaining the result of preventing data theft.
In the third scenario, the recited structure or actions are not recited with sufficient detail to achieve the claimed result. Thus, the claim element would not be limited by a mere expression of intended result.
…a server whereby data theft is prevented
There are no limits recited on how the server is structured or how it functions to prevent data theft. Therefore, the whereby clause does not add a further limitation to the claim and would not provide a patentable distinction.
If the applicant argues that the result should be given patentable weight, the boundaries of the limitation would need to be clearly defined. If the intended result limitation is necessary to understand the claim and the boundaries are not clear, the claim would be indefinite. This is a good example of where clarifying what language is considered to be, or not to be, patentably distinguishing would enhance the understanding of the claim interpretation.

18. Compare: Functional Limitation vs. Intended Result
Compare the two following limitations:
. . . a microprocessor programmed to perform a lossless compression algorithm on a data stream;
. . .a microprocessor programmed for data compression;
The first limitation recites the structure of a microprocessor followed by a specific function (a lossless compression algorithm) that it is programmed to perform. The limitation should be interpreted as a microprocessor capable of performing the programmed algorithm. As such, the programmed function could provide a patentable distinction over the prior art.
The second limitation recites the structure of a microprocessor followed by a result (data compression) that it is programmed to accomplish. In this case, there is no limit imposed on how the claimed microprocessor obtains the result. As such, any microprocessor that has programming capable of obtaining the result of data compression in any way (i.e., using any algorithm that achieves the result) would meet this limitation.
Compare a functional limitation to an intended result using the following claim limitations:
. . . a microprocessor programmed to perform a lossless compression algorithm on a data stream;
. . .a microprocessor programmed for data compression;
The first limitation recites the structure of a microprocessor followed by a specific function (a lossless compression algorithm) that it is programmed to perform. The limitation should be interpreted as a microprocessor capable of performing the programmed algorithm. As such, the programmed function could provide a patentable distinction over the prior art.
The second limitation recites the structure of a microprocessor followed by a result (data compression) that it is programmed to accomplish. In this case, there is no limit imposed on how the claimed microprocessor obtains the result. As such, any microprocessor that has programming capable of obtaining the result of data compression in any way (i.e., using any algorithm that achieves the result) would meet this limitation.

19. Example: Functional Limitation with Intended Use and Intended Result
Consider a functional limitation that recites an element along with a description of the action the element is designed to perform, such as:
A microprocessor programmed to perform a lossless compression algorithm on a data stream for ZIP file creation in an archival process…
The function of the microprocessor is “to perform a lossless compression algorithm”
This function imposes limits on the broadest reasonable interpretation of the microprocessor – the BRI is a microprocessor with programming to perform this function.
The intended result of the microprocessor performing the function is “for ZIP file creation”
In a claim limitation that merely recited a “microprocessor programmed for ZIP file creation”, the BRI would be a microprocessor programmed (in any way) to create a ZIP file.
The intended use (also called field of use) is “in an archival process”
Based on this limitation, the intended use would not impose limits on the BRI of the microprocessor
Consider a functional limitation that also recites an intended use and intended result.
In this case, a functional limitation recites an element along with a description of the action the element is designed to perform, such as:
A microprocessor programmed to perform a lossless compression algorithm on a data stream for ZIP file creation in an archival process…
The function of the microprocessor is “to perform a lossless compression algorithm,” the intended result is “for ZIP file creation,” and the intended use is “in an archival process.”
The function imposes limits on the broadest reasonable interpretation of the microprocessor – the BRI is a microprocessor with programming to perform this function. This results in ZIP file creation. In the claim limitation recited above, the intended result adds no further limits on the microprocessor and functional limitation.
However, in a claim limitation that merely recited a “microprocessor programmed for ZIP file creation”, the BRI would by a microprocessor programmed in any way that is capable of creating a ZIP file. The intended use in an archival process does not impose any further limits on the BRI of the microprocessor. A microprocessor programmed to perform a lossless compression algorithm on a data stream that is used in different process would still meet this claim limitation.

20. Non-Functional Descriptive Material
While functional limitations can in certain circumstances limit a claim, non-functional descriptive material does not impart a patentable distinction to a claim
Non-functional descriptive material is based on the “printed matter” doctrine in which matter that has no functional relationship to the substrate upon which is it printed does not provide a patentable distinction to the substrate
Information, messages, indicia, raw data, colors, etc. can be considered such descriptive material
Patentable weight will only be given when such descriptive material has a functional relationship to the substrate
MPEP
Let’s turn to non-functional descriptive material. While functional limitations can in certain circumstances limit a claim, non-functional descriptive material does not impart a patentable distinction to a claim. Non-functional descriptive material is based on the “printed matter” doctrine in which matter that has no functional relationship to the substrate upon which is it printed does not provide a patentable distinction to the substrate. Information, messages, indicia, raw data, colors, etc. can be considered such descriptive material. Patentable weight will only be given when such descriptive material has a functional relationship to the substrate. See MPEP for further details.

21. Non-Functional Descriptive Material in Computer Context
Where the claim as a whole is directed to conveying a message or meaning to a human reader independent of a computer system, and/or a computer-readable medium merely serves as a support for information or data, the message or information will not impart a patentable distinction when no functional relationship exists
For example, a claim to a memory stick containing tables of batting averages, or tracks of recorded music, utilizes the memory stick merely as a support for the information. Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the memory.
In a computer context, where the claim as a whole is directed to conveying a message or meaning to a human reader independent of a computer system, and/or a computer-readable medium merely serves as a support for information or data, the message or information will not impart a patentable distinction when no functional relationship exists. For example, a claim to a memory stick containing tables of batting averages, or tracks of recorded music, utilizes the memory stick merely as a support for the information. Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the memory.

22. Functional Material in Computer Context
Where programming performs some function with respect to the computer or computer component with which it is associated, a functional relationship will be found and the programming can create a patentable distinction
The following examples show computer readable media in which the stored programming should be given patentable weight
A non-transitory computer readable medium having computer executable instructions stored thereon, wherein the instructions include the steps comprising:
determining a first data point…
determining a second data point…
A non-transitory computer readable medium having an executable computer program stored thereon, wherein the program includes:
computer executable code for determining a first data point..
computer executable code for determining a second data point…
MPEP (III)
In contrast, where programming performs some function with respect to the computer or computer component with which it is associated, a functional relationship will be found and the programming can create a patentable distinction.
The following examples show computer readable media in which the stored programming should be given patentable weight:
A non-transitory computer readable medium having computer executable instructions stored thereon, wherein the instructions include the steps comprising:
determining a first data point…
determining a second data point…
A non-transitory computer readable medium having an executable computer program stored thereon, wherein the program includes:
computer executable code for determining a first data point..
computer executable code for determining a second data point…
These examples are provided for illustrative purposes only. There are many other acceptable ways to express programming such that it has a functional relationship with a computer component.
See MPEP (III) for further details.
While stored computer programming or a method of executing a computer program can create a patentable distinction, note that a program per se that is merely disembodied instructions or information would not be patentable as it would fail to claim one of the statutory categories of invention under 35 USC 101.

23. Proper Claim Interpretation on the Record Leads to Clarity
A detailed and informative claim interpretation that addresses all functional limitations and other claim language, such as intended use, will clearly set forth the claim scope and benefit the applicant and the public by:
reducing guesswork in responding to the Examiner’s action;
clearly setting forth the protection afforded the applicant;
providing a clear file history that would prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings; and
providing public notice as to how the claim was interpreted during examination.
A detailed and informative claim interpretation that addresses all functional limitations and other claim language, such as intended use or result, will clearly set forth the claim scope and benefit the applicant and the public. For applicants, when the meaning of a term is sufficiently fleshed out during patent prosecution, the written record will inform applicant about how to respond to objections and rejections made in an Office action.
Clear details about claim terms assist the patent owner in understanding what has been protected by the patent grant. Clear determinations of claim interpretation may clarify or even pre-empt arguments on claim construction during patent litigation, interferences, reissues, reexaminations, inter partes reviews, supplementation examinations and post-grant proceedings. Finally, the written record created by the examiner and informed by the responses of the applicant will provide public notice regarding claim scope during prosecution.

24. Determining Patentability of Claims including Functional Claim Limitations

25. Patentability Issues Relating to Use of Functional Claim Language
As previously noted, functional language can be limiting when (i) invoking 112(f) or (ii) recited with a structure, material or action
However, when the claim language imposes no limits on how the claimed function is performed in terms of structure, material or actions, a functional limitation can raise the following issues:
Indefiniteness under 112(b): Failure to provide a clear-cut indication of claim scope because the functional language is not sufficiently precise and definite resulting in no boundaries on the claim limitation
Lack of written description under 112(a): Failure to explain how the inventor envisioned the function to be performed such that the written description does not show that the inventor had possession of the claimed invention
Lack of enablement under 112(a): Failure to provide an enabling disclosure commensurate with the scope of the claims when the claim language covers all ways of performing a function
Application of prior art: Uncertainty as to the scope of the claim leading to broad application of prior art
Once a claim with functional language is construed and its broadest reasonable interpretation is established, it must be examined for patentability.
As previously noted, functional language can be limiting when (i) invoking 112(f) or (ii) recited with a structure, material or action. However, when the claim language imposes no limits on how the claimed function is performed in terms of structure, material or actions, a functional limitation can raise the following issues:
- Indefiniteness under 112(b): Failure to provide a clear-cut indication of claim scope because the functional language is not sufficiently precise and definite resulting in no boundaries on the claim limitation.
- Lack of written description under 112(a): Failure to explain how the inventor envisioned the function to be performed such that the written description does not show that the inventor had possession of the claimed invention.
- Lack of enablement under 112(a): Failure to provide an enabling disclosure commensurate with the scope of the claims when the claim language covers all ways of performing a function.
- Application of prior art: Uncertainty as to the scope of the claim leading to broad application of prior art.
A more detailed discussion of functional claim terms with respect to 35 USC 112(a) will be the subject of a future training module.

26. Definiteness – 35 U.S.C. 112(b)
Consider the following to determine whether a claim limitation expressed in functional language is definite with clear scope/meaning:
Is there a clear indication of the scope of subject matter covered by the language, e.g., a specification definition or known meaning in the art?
Does the limitation have well defined boundaries or does it only express a problem solved or intended result?
Would one of ordinary skill in the relevant art know what structures/steps are covered by the limitation?
∙ The above considerations are not all inclusive nor limiting.
MPEP (g)
It is critical to ensure that functional language is definite under 35 USC 112(b). Consider the following to determine whether a claim limitation expressed in functional language is definite with clear scope/meaning:
Is there a clear indication of the scope of subject matter covered by the language, e.g., a specification definition or known meaning in the art?
- Does the limitation have well defined boundaries or does it only express a problem solved or intended result?
- Would one of ordinary skill in the relevant art know what structures/steps are covered by the limitation?
- The above considerations are not all inclusive nor limiting. More information can be found in MPEP (g).
If a claim limitation is not patentably distinguishing it may not be necessary to establish the boundaries of that limitation. For example, a mere intended use that imposes no limits on the claim and can be reasonably understood will usually only raise issues of definiteness if it is argued by the applicant to impart a patentable distinction or if it is necessary to establish a boundary to make sense of the remainder of the claim.

27. Resolution of Functional Term Ambiguity
During prosecution, applicant can resolve ambiguities that may occur when functional language is used by:
Demonstrating that the specification provides adequate support when viewed from the perspective of one of ordinary skill in the art for the functional claim limitation(s) to show definite boundaries; and/or
Amending the functional claim limitation(s) to ensure the boundaries are clear.
MPEP (g)
During prosecution, applicant can resolve ambiguities that may occur when functional language is used by:
- Demonstrating that the specification provides adequate support when viewed from the perspective of one of ordinary skill in the art for the functional claim limitation(s) to show definite boundaries; and/or
- Amending the functional claim limitation(s) to ensure the boundaries are clear.
See MPEP (g) for further information.

28. Example: ‘Intended Result’ Language Ambiguity
In a claim directed to a software based system for creating a customized computer interface screen, the following limitation is recited:
. . . said interface screen under construction will be aesthetically pleasing and functionally operable for effective delivery of information to a user; . . .
The limitation “aesthetically pleasing” is an intended result and does not provide a clear cut indication of scope because it imposes no structural limits on the screen
The specification also does not define how one of ordinary skill in the art would know the boundaries of such a subjective intended result
Accordingly, the limitation should either not be given patentable weight or it should be considered under 35 USC 112(b) as indefinite
If not given patentable weight, the record should be made clear regarding the claim interpretation so that applicant has the ability to respond if appropriate.
If found indefinite, applicant can either demonstrate how the limitation is definite (in this case, perhaps how it can be measured) or amend the claim to remove the limitation.
In a claim directed to a software based system for creating a customized computer interface screen, the following limitation is recited:
. . . said interface screen under construction will be aesthetically pleasing and functionally operable for effective delivery of information to a user; . . .
The limitation “aesthetically pleasing” is an intended result and does not provide a clear cut indication of scope because it imposes no structural limits on the screen. The specification also does not define how one of ordinary skill in the art would know the boundaries of such a subjective intended result. Accordingly, the limitation should either not be given patentable weight or it should be considered under 35 USC 112(b) as indefinite. In cases where a limitation is not given patentable weight, the record should be made clear regarding the claim interpretation so that applicant has the ability to respond if appropriate. If found indefinite, Applicant can either demonstrate how the limitation is definite (in this case, perhaps how it can be measured) or amend the claim to remove the limitation. This example is drawn from Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005). In this case, it was argued as a critical feature to the claim, and the limitation was found indefinite.

29. Adequate Supporting Disclosure 35 U.S.C. 112(a)
Consider the following to determine if the claim is sufficiently supported and enabled by the specification (the written description and drawings):
Does the specification explain how (i.e., the steps or procedure) the inventor performs the claimed function? (written description)
Does the specification provide enough details such that one of ordinary skill in the art could make and use the invention without undue experimentation? (enablement)
Written description and enablement are different considerations and both must be met
The ability of one skilled in the art to make and use the invention does not satisfy the written description requirement if details of how the function is to be performed are not disclosed
MPEP
Functional limitations must be fully supported by the specification and drawings to show that the inventor had possession of the claimed invention and to provide enough enabling description so that the invention can be practiced without undue experimentation. These are requirements under 35 USC 112(a) and apply equally to all arts.
Consider the following to determine if the claim is sufficiently supported and enabled by the specification (the written description and drawings):
- Does the specification explain how (i.e., the steps or procedure) the inventor performs the claimed function? (written description)
- Does the specification provide enough details such that one of ordinary skill in the art could make and use the invention without undue experimentation? (enablement)
Written description and enablement are different considerations and both must be met.
The ability of one skilled in the art to make and use the invention does not satisfy the written description requirement if details of how the inventor performs the function are not disclosed. It is particularly important when computer functions are claimed that the written description explains the details (the procedure or steps) of how the inventor contemplates performing the function since there are often many different ways to program a particular function. See MPEP for further details.

30. Addressing Computer Related Functional Limitations with Art – 102/103
For programmed devices, the claim should be interpreted to include the claimed programming or software when it is positively recited
Note that a claim that merely recites the desired result or intended outcome is not limited by the way those results/outcomes are achieved
Thus, a claim reciting a computer programmed to perform a function:
Can be met with prior art that discloses a computer that performs the same function
Can be met with prior art that discloses a computer that has programming that is capable of performing the same function
Cannot be rejected based upon prior art that discloses a general purpose computer that would be able to be programmed to perform the same function
Compare to a claim reciting a programmable device
Can be met by a device that would be able to be programmed to perform the function
Determining whether a functional limitation defines over the prior art under 35 USC 102 and 103 requires a complete understanding of whether the limitation has a limiting effect on the claim.
For programmed devices, the claim should be interpreted to include the claimed programming or software when it is positively recited. Note that a claim that merely recites the desired result or intended outcome is not limited by the way those results/outcomes are achieved. Thus, a claim reciting a computer programmed to perform a function:
- Can be met with prior art that discloses a computer that performs the same function.
- Can be met with prior art that discloses a computer that has programming that is capable of performing the same function.
- Cannot be rejected based upon prior art that discloses a general purpose computer that would be able to be programmed to perform the same function.
Compare to a claim reciting a programmable device. That can be met by a device that would be able to be programmed to perform the function.

31. Application of Prior Art Example
Consider the following claim limitations that are disclosed in the specification as functions being performed by a CPU with specific software programming. The functional limitations include:
an execution unit and associated register file, the execution unit to execute instructions of a plurality of instruction sets, including a stack-based and a register-based instruction set;
a mechanism to maintain at least some data for the plurality of instruction sets in the register file, including maintaining an operand stack for stack based instructions in the register file and an indication of a depth of the operand stack;
The underlined portions of the claim recite functionalities that cannot be practiced in hardware alone and require enabling software – therefore the functional language adds structural limitations to the claimed invention
An appropriate prior art rejection would include a teaching of the claimed hardware programmed to perform the claimed functionalities in order to meet all the limitations of the claims
It would not be appropriate to apply prior art that discloses the CPU hardware alone asserting that the CPU could be programmed to perform the claimed functions
Consider the following claim limitations that are disclosed in the specification as functions being performed by a CPU with specific software programming. The functional limitations include:
an execution unit and associated register file, the execution unit to execute instructions of a plurality of instruction sets, including a stack-based and a register-based instruction set;
a mechanism to maintain at least some data for the plurality of instruction sets in the register file, including maintaining an operand stack for stack based instructions in the register file and an indication of a depth of the operand stack;
The underlined portions of the claim “to execute instructions of a plurality of instruction sets” and “maintaining an operand stack for stack based instructions” recite functionalities that cannot be practiced in hardware alone and require enabling software. This functional language adds structural limitations to the claimed invention. An appropriate prior art rejection would include a teaching of the claimed hardware programmed to perform the claimed functionalities in order to meet all the limitations of the claims. It would not be appropriate to apply prior art that discloses the CPU hardware alone asserting that the CPU could be programmed to perform the claimed functions. This example is drawn from Nazomi Communications Inc. v. Nokia Corp. et al., 109 USPQ2d 1258 (Fed. Cir. 2014).

32. Summary
The identification and interpretation of functional claim limitations is important for ensuring claim scope is clear
Adding the interpretation to the record will increase the clarity of the Office Action and benefits the applicant, public and the Examiner
Functional claim limitations that are not properly construed undermine the public notice function of claims
Functional claim limitations require due consideration as their scope is highly dependent upon contextual usage
Functional claim limitations must comport with the statutory requirements of 35 USC 112(a) and (b)
Functional claim limitations must be evaluated to determine whether they impose a patentable distinction over prior art
It is important to remember that every case turns on its own set of particular facts. There are no “magic” words and every claim must be analyzed in light of its supporting disclosure and the state of the relevant art.
By focusing on the meaning of the terms as used in the art, considering any invocation 112(f) and reviewing the specification for exceptions, lexicography or disavowal of claim scope, the examiner will be able to reach a conclusion regarding claim construction.
In the end, granted patents that have clarity regarding the common understanding of claim terms in the prosecution history aids the applicant, public and the examiner.