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Author(s): Charles R. Macedo, Benjamin M. Halpern, Keith J. Barkaus

 

The 2019 Guidelines have two parts.  The first part “addresses issues related to the examination of computer-implemented functional claims having means-plus-function limitations” (issues related to means (or step) plus function limitations under 35 U.S.C. 112(f) and definiteness under 35 U.S.C. 112(b)).  The second part “addresses written description and enablement issues related to the examination of computer-implemented functional claims that recite only the idea of a solution or outcome of a problem, but fail to recite details of how the solution or outcome is accomplished” (issues related to proper written description and enablement support under 35 U.S.C. 112(a)).

 

The first part of the 2019 Guidelines requires Examiners to determine whether to apply 35 U.S.C. § 112(f) by first determining the broadest reasonable interpretation of the claim consistent with the specification and one of ordinary skill in the art.  Examiners are then asked to implement the following three-pronged test:

 

 

Any of the prongs and/or required structure analysis can cause an examiner to apply an analysis under 35 U.S.C. § 112(f) (e.g., if a claim uses the term “means,” the examiner may employ an analysis under 35 U.S.C. § 112(f); if the specification provides a description sufficient to inform one of ordinary skill in the art that the term or phrase denotes structure, then the examiner may determine an analysis under 35 U.S.C. § 112(f) is unnecessary).  With respect to the third prong, to determine whether a claim term or phrase coupled with a function denotes a structure, examiners are required to analyze whether:

 

 

If the examiner determines that the claim at issue is to be analyzed under 35 U.S.C. § 112(f), the new guidelines require this be expressly stated in the Office Action.  In response to the Office Action which states the claims are being analyzed under 35 U.S.C. § 112(f), the applicant, if he or she wishes to argue that 35 U.S.C. § 112(f) should not be used, must either present a sufficient showing to establish that the claim limitation recites sufficient structure, or amend the claim limitation.

 

With regard to computer functions analyzed under 35 U.S.C. § 112(f), the guidelines require the specification to disclose an algorithm for performing the claimed function.  Failure to do so will result in an indefiniteness rejection under 35 U.S.C. § 112(b).  An algorithm is defined as a “finite sequence of steps for solving a logical or mathematical problem or performing a task.”  The new guidelines require the algorithm to be sufficient to perform the entire claimed function.  Mathematical formulas,  prose, a flow chart, or any understandable terms may be employed to satisfy the new algorithm requirement. 

 

 

The 2019 Guidelines emphasize that 35 U.S.C. § 112(a) requires a disclosure to satisfy both the written description requirement and the enablement requirement, regardless of whether an Examiner reviews the claim term or phrase under 35 U.S.C. § 112(f).

 

With respect to the written description requirement, Examiners are to determine whether the scope of enablement is commensurate with the scope of protection sought by the claims.  Thus, when examining computer-implemented, software-related claims, the 2019 Guidelines make it clear that Examiners “should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.”

 

With respect to the enablement requirement, the new guidelines state that Examiners “should consider (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation.”  It is important to note here that the new guidelines also make it clear that “the high level of skill in the art and the similarly high level of predictability in generating programs to achieve an intended result without undue experimentation” may obviate the need to disclose aspects of an invention that are not considered novel (i.e., aspects that are generally well known in the art) in order to meet the enablement requirement.

 

The USPTO is accepting written comments from the public regarding the 35 U.S.C. §112(f) guidelines until March 8, 2019.

 

For more information on patent office practice, please feel free to contact one of our attorneys.

 

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