[Federal Register Volume 64, Number 146 (Friday, July 30, 1999)]
[Notices]
[Pages 41392-41394]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-19368]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office
[Docket No: 990406087-9087-01]
RIN 0651-ZA03


Interim Supplemental Examination Guidelines for Determining the 
Applicability of 35 U.S.C. 112 para. 6

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The Patent and Trademark Office (PTO) requests comments from 
the public regarding interim supplemental examination guidelines to be 
used by office personnel in their review of patent applications to 
determine when 35 U.S.C. 112 para. 6 should be applied to a given claim 
limitation.

DATES: The interim supplemental examination guidelines are effective 
July 30, 1999.
    Written comments on the interim supplemental examination guidelines 
will be accepted by the PTO until September 28, 1999.

ADDRESSES: Written comments should be addressed to the attention of 
Magdalen Greenlief, Box Comments, Assistant Commissioner for Patents, 
Washington, DC 20231 or to Ray Chen, Office of the Solicitor, P.O. Box 
15667, Arlington, Virginia 22215, or by facsimile transmission to (703) 
305-8825, or by electronic mail at [email protected] or 
[email protected].
    Written comments will be made available for public inspection in 
Suite 910, Crystal Park 2, 2121 Crystal Drive, Arlington, Virginia 
22202. In addition, comments provided in machine readable format will 
be available through the PTO's Website at http://www.uspto.gov.

FOR FURTHER INFORMATION CONTACT: Magdalen Greenlief, Box Comments, 
Assistant Commissioner for Patents, Washington, DC 20231 or Ray Chen, 
Office of the Solicitor, P.O. Box 15667, Arlington, Virginia 22215, or 
by facsimile transmission to (703) 305-8825, or by electronic mail at 
[email protected] or [email protected].

SUPPLEMENTARY INFORMATION: The following interim supplemental 
examination guidelines are being published for public comment. In May 
1994, the PTO issued guidelines implementing the change in examination 
practice necessitated by the Federal Circuit's decision in In re 
Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994)(en banc). 
Since Donaldson, several decisions by the Federal Circuit have 
analyzed: (1) When a particular claim limitation invokes 35 U.S.C. 112 
para. 6; and (2) the duty of the applicant to describe the 
corresponding structure, material, or acts that perform the function 
recited in a means-plus-function limitation. In order to clarify these 
issues, the PTO is issuing these interim supplemental examination 
guidelines to assist PTO personnel in the examination of patent 
applications to determine: (1) Whether a claim limitation invokes 35 
U.S.C. 112 para. 6; and (2) whether the written description adequately 
describes the corresponding structure, material, or acts needed to 
support a claim limitation under 35 U.S.C. 112 para. 6.
    It has been determined that these interim supplemental examination 
guidelines are not a significant rule for purposes of Executive Order 
12866. Because these supplemental examination guidelines are 
interpretive rules and general statements of policy, they are exempt 
from notice and comment rulemaking under 5 U.S.C. 553(b)(A). The 
collection of information for the filing and processing of a patent 
application has been reviewed and previously approved by the Office of 
Management and Budget under the following control numbers: 0651-0031 
and 0651-0032. These supplemental examination guidelines involve no 
additional collection of information subject to the Paperwork Reduction 
Act, 44 U.S.C. ch. 35. Notwithstanding any other provision of law, no 
person is required to respond nor shall a person be subject to a 
penalty for failure to comply with a collection of information subject 
to the requirements of the Paperwork Reduction Act unless that 
collection of information displays a currently valid OMB Control 
Number.
    Members of the public may present written comments on these 
supplemental examination guidelines. Written comments should include 
the following information:

--Name and affiliation of the individual responding; and
--An indication of whether the comments offered represent views of the 
respondent's organization or are the respondent's personal views.

    The PTO is particularly interested in comments relating to the 3-
prong analysis as to when a claim limitation will be interpreted by PTO 
personnel to invoke 35 U.S.C. 112 para. 6. The PTO is also interested 
in comments relating to the analysis as to when a ``means-'' (or 
``step-'') plus-function claim limitation satisfies the requirements of 
35 U.S.C. Sec. 112 para. 2.

I. Interim Supplemental Examination Guidelines for Claims Subject 
to 35 U.S.C. 112 para. 6

    In February 1994, the Court of Appeals for the Federal Circuit 
(Federal Circuit) held in an en banc decision that ``the 'broadest 
reasonable interpretation' that an examiner may give means-plus-
function language is that statutorily mandated in [35 U.S.C. 112 para. 
6] * * * [T]he PTO may not disregard the structure disclosed in the 
specification corresponding to such language when rendering a 
patentability determination.'' In re Donaldson Co., 16 F.3d 1189, 1194-
95, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). In May 1994, the 
PTO issued guidelines implementing changes in examination practice in 
response to Donaldson. See Means or Step Plus Function Limitation Under 
35 U.S.C. Sec. 112, para. 6; Notice, 1162 Off. Gaz. Pat. Office 59 (May 
17, 1994) (``1994 Guidelines'').
    The 1994 Guidelines note that there is no ``magic'' language that 
invokes 35 U.S.C. 112 para. 6.\1\ However, to establish uniformity to 
the extent possible, in view of the recent case law, and to make the 
prosecution record clear, these interim guidelines supplement the 1994 
Guidelines in assisting examiners to determine when 35 U.S.C. 112 para. 
6 should be applied. To the extent these supplemental guidelines are 
inconsistent with the 1994 Guidelines, the supplemental guidelines are 
controlling.
    The PTO must apply 35 U.S.C. 112 para. 6 in appropriate cases, and 
give claims their broadest reasonable interpretation, in light of and 
consistent with the written description of the invention in the 
application.\2\ Thus, a claim limitation will be interpreted to invoke 
35 U.S.C. 112 para. 6 if it meets the following 3-prong analysis:
    (1) the claim limitations must use the phrase ``means for'' or 
``step for''; \3\
    (2) the ``means for'' or ``step for'' must be modified by 
functional language; \4\ and
    (3) the phrase ``means for'' or ``step for'' must not be modified 
by structure, material or acts for achieving the specified function.\5\
    With respect to the first prong of this analysis, a claim element 
that does not include the phrase ``means for'' or ``step for'' will not 
be considered to invoke 35 U.S.C. 112 para. 6. If an applicant wishes 
to have the claim limitation treated under 35 U.S.C. 112 para. 6, 
applicant must either: (1) Amend the claim to include the phrase 
``means for'' or ``step for'' in accordance with these interim

[[Page 41393]]

guidelines; or (2) show that even though the phrase ``means for'' or 
``step for'' is not used, the claim limitation is written as a function 
to be performed and does not provide any structure, material, or acts 
which would preclude application of 35 U.S.C. 112 para. 6.\6\
    Accordingly, these interim guidelines provide applicants with the 
opportunity to either invoke or not invoke 35 U.S.C. 112 para. 6 based 
upon a clear and simple set of criteria.

II. Procedures for Determining Whether the Written Description 
Adequately Describes the Corresponding Structure, Material, or Acts 
Necessary To Support a Claim Limitation Which Invokes 35 U.S.C. 112 
para. 6

    If a claim limitation invokes 35 U.S.C. 112 para. 6, it must be 
interpreted to cover the corresponding structure, materials, or acts in 
the specification and ``equivalents thereof.'' \7\ If the written 
description fails to set forth the supporting structure, material or 
acts corresponding to the means- (or step-) plus-function, the claim 
may not meet the requirement of 35 U.S.C. 112 para. 2:

    Although [35 U.S.C. 112 para. 6] statutorily provides that one 
may use means-plus-function language in a claim, one is still 
subject to the requirement that a claim `particularly point out and 
distinctly claim' the invention. Therefore, if one employs means-
plus-function language in a claim, one must set forth in the 
specification an adequate disclosure showing what is meant by that 
language. If an applicant fails to set forth an adequate disclosure, 
the applicant has in effect failed to particularly point out and 
distinctly claim the invention as required by [35 U.S.C. 112 para. 
2].\8\

    Whether a claim reciting an element in means- (or step-) plus-
function language fails to comply with 35 U.S.C. 112 para. 2 because 
the specification does not disclose adequate structure (or material or 
acts) for performing the recited function is closely related to the 
question of whether the specification meets the description requirement 
in 35 U.S.C. 112 para. 1.\9\ However, 35 U.S.C. 112 para. 6 does not 
impose any requirements in addition to those imposed by 35 U.S.C. 112 
para. 1.\10\ Conversely, the invocation of 35 U.S.C. 112 para. 6 does 
not exempt an applicant from compliance with 35 U.S.C. 112 Paras. 1 and 
2.\11\
    The written description does not have to explicitly describe the 
structure (or material or acts) corresponding to a means- (or step-) 
plus-function limitation to particularly point out and distinctly claim 
the invention as required by 35 U.S.C. 112 para. 2.\12\ Rather, 
disclosure of structure corresponding to a means-plus-function 
limitation may be implicit in the written description if it would have 
been clear to those skilled in the art what structure must perform the 
function recited in the means-plus-function limitation.\13\ However, 
the claims must still be analyzed to determine whether there exists 
corresponding adequate support for such claim under 35 U.S.C. 112 para. 
1.\14\
    Therefore, a means-(or step-) plus-function claim limitation 
satisfies 35 U.S.C. 112 para. 2 if: (1) The written description links 
or associates particular structure, materials, or acts to the function 
recited in a means-(or step-) plus-function claim limitation; or (2) it 
is clear based on the facts of the application that one skilled in the 
art would have known what structure, materials, or acts perform the 
function recited in a means- (or step-) plus-function limitation.
    37 CFR 1.75(d)(1) provides, in part, that ``the terms and phrases 
used in the claims must find clear support or antecedent basis in the 
description so that the meaning of the terms in the claims may be 
ascertainable by reference to the description.'' In the situation in 
which the written description only implicitly or inherently sets forth 
the structure, materials, or acts corresponding to a means- (or step-) 
plus-function, and the examiner concludes that one skilled in the art 
would recognize what structure, materials, or acts perform the function 
recited in a means- (or step-) plus-function, the examiner should 
either: (1) Have the applicant clarify the record by amending the 
written description such that it expressly recites what structure, 
materials, or acts perform the function recited in the claim 
element;\15\ or (2) state on the record what structure, materials, or 
acts perform the function recited in the means- (or step-) plus-
function limitation.
    In implementing the change in examination practice necessitated by 
Donaldson, the PTO set forth a two-step process for making a prima 
facie case of equivalence of a prior art element during ex parte 
examination. First, the examiner must find that the prior art element 
performs the function specified in the claim element, and, second, the 
examiner must find that the prior art element is not excluded by any 
explicit definition provided in the specification for an 
equivalent.\16\ This two-step process is not superseded by these 
interim supplemental guidelines, and is consistent with the requirement 
that the PTO give claims their broadest reasonable interpretation.\17\ 
The specification need not describe the equivalents of the structures, 
materials, or acts corresponding to the means- (or step-) plus-function 
claim element.\18\ Where, however, the specification is silent as to 
what constitutes equivalents, the burden is placed upon the applicant 
to show that a prior art element which performs the claimed function is 
not an equivalent of the structure, material, or acts disclosed in the 
specification.\19\

Endnotes

    \1\ See 1994 Guidelines at 59.
    \2\ See In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 
1850 (Fed. Cir. 1994) (en banc) (stating that 35 U.S.C. 112 para. 6 
``merely sets a limit on how broadly the PTO may construe means-
plus-function language under the rubric of `reasonable 
interpretation' ''). The Federal Circuit has held that applicants 
(and reexamination patentees) before the PTO have the opportunity 
and the obligation to define their inventions precisely during 
proceedings before the PTO. See In re Morris, 127 F.3d 1048, 1056-
57, 44 USPQ2d 1023, 1029-30 (Fed. Cir. 1997) (35 U.S.C. 112 para. 2 
places the burden of precise claim drafting on the applicant); In re 
Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) 
(manner of claim interpretation that is used by courts in litigation 
is not the manner of claim interpretation that is applicable during 
prosecution of a pending application before the PTO); Sage Products 
Inc. v. Devon Industries Inc., 126 F.3d 1420, 1425, 44 USPQ2d 1103, 
1107 (Fed. Cir. 1997) (patentee who had a clear opportunity to 
negotiate broader claims during prosecution but did not do so, may 
not seek to expand the claims through the doctrine of equivalents, 
for it is the patentee, not the public, who must bear the cost of 
its failure to seek protection for this foreseeable alteration of 
its claimed structure). Thus, applicants and reexamination patentees 
before the PTO have an opportunity and obligation to specify, 
consistent with these supplemental guidelines, when a claim 
limitation invokes 35 U.S.C. 112 para. 6.
    \3\ Cf. Seal-Flex, Inc. v. Athletic Track and Court 
Construction, 172 F.3d 836, 849-50, 50 USPQ2d 1225, 1233-34 (Fed. 
Cir. 1999) (Radar, J., concurring) (use of the phrase ``step for'' 
in a method claim raises a presumption that 35 U.S.C. 112 para. 6 
applies, whereas, use of the word ``step'' by itself or the phrase 
``step of'' does not invoke a presumption that 35 U.S.C. 112 para. 6 
applies); Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 
1456, 1463, 45 USPQ2d 1545, 1550 (Fed. Cir. 1998) (``use of the word 
`means' gives rise to `a presumption that the inventor used the term 
advisedly to invoke the statutory mandates for means-plus-function 
clauses' ''); O.I. Corp. v. Tekmar, 115 F.3d 1576, 1583, 42 USPQ2d 
1777, 1782 (Fed. Cir. 1997) (method claim that paralleled means-
plus-function apparatus claim but lacked ``step for'' language did 
not invoke 35 U.S.C. 112 para. 6). Thus, absent an express 
recitation of ``means for'' or ``step for'' in the limitation, the 
broadest reasonable interpretation will not be limited to 
``corresponding structure * * * and equivalents thereof.'' Cf. 
Morris, 127 F.3d at 1055, 44 USPQ2d at 1028 (``no comparable mandate 
in the patent statute that relates the claim scope of non-Sec. 112 
para. 6

[[Page 41394]]

claims to particular matter found in the specification'').
    \4\ See York Prod., Inc. v. Central Tractor Farm & Family 
Center, 99 F.3d 1568, 1574, 40 USPQ2d 1619, 1624 (Fed. Cir. 1996) 
(holding that a claim limitation containing the term ``means'' does 
not invoke 35 U.S.C. 112 para. 6 if the claim limitation does not 
link the term ``means'' to a specific function).
    \5\ See Seal-Flex, 172 F.3d at 849, 50 USPQ2d at 1234 (Radar, 
J., concurring) (``Even when a claim element uses language that 
generally falls under the step-plus-function format, however, 112 
para. 6 still does not apply when the claim limitation itself 
recites sufficient acts for performing the specified function''). 
Cf. Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1303-04, 
50 USPQ2d 1429, 1435-36 (Fed. Cir. 1999) (holding ``positioning 
means for moving'' does not invoke 35 U.S.C. 112, para. 6 because 
the claim further provides a list of the structure underlying the 
means and the detailed recitation of the structure for performing 
the moving function removes this element from the purview of 35 
U.S.C. 112, para. 6); Cole v. Kimberly-Clark Corp., 102 F.3d 524, 
531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996) (holding ``perforation 
means * * * for tearing'' does not invoke 35 U.S.C. 112 para. 6 
because the claim describes the structure supporting the tearing 
function (i.e., perforation)). In other cases, the Federal Circuit 
has held otherwise. See Unidynamics Corp. v. Automatic Prod. Int'l, 
157 F.3d 1311, 1319, 48 USPQ2d 1099, 1104 (Fed. Cir. 1998) (holding 
``spring means'' does invoke 35 U.S.C. 112 para. 6). During 
examination, however, applicants have the opportunity and the 
obligation to define their inventions precisely, including whether a 
claim limitation invokes 35 U.S.C. 112 para. 6. Thus, if the phrase 
``means for'' or ``step for'' is modified by structure, material or 
acts for achieving the specified function, the PTO will not apply 35 
U.S.C. 112 para. 6 until such modifying language is deleted from the 
claim limitation. See also supra note 1.
    \6\ While traditional ``means for'' or ``step for'' language 
does not automatically make an element a means-(or step-) plus-
function element, conversely, lack of such language does not prevent 
a limitation from being construed as a means-(or step-) plus-
function limitation. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 
1352, 1356, 50 USPQ2d 1372, 1374-75 (Fed. Cir. 1999) (``ink delivery 
means positioned on * * *'' invokes 35 U.S.C. 112 para. 6 since the 
phrase ``ink delivery means'' is equivalent to ``means for ink 
delivery''); Al-Site Corp. v. VSI International Inc., 174 F.3d 1308, 
1318, 50 USPQ2d 1161, 1166-67 (Fed. Cir. 1999) (although the claim 
elements ``eyeglass hanger member'' and ``eyeglass contacting 
member'' include a function, these claim elements do not invoke 35 
U.S.C. 112 para. 6 because the claims themselves contain sufficient 
structural limitations for performing those functions); Seal-Flex, 
172 F.3d at 849, 50 USPQ2d at 1234 (Radar, J., concurring) (``claim 
elements without express step-plus-function language may 
nevertheless fall within 112 para. 6 if they merely claim the 
underlying function without recitation of acts for performing that 
function * * * In general terms, the `underlying function' of a 
method claim element corresponds to what that element ultimately 
accomplishes in relationship to what the other elements of the claim 
and the claim as a whole accomplish. `Acts,' on the other hand, 
correspond to how the function is accomplished.); Personalized Media 
Communications LLC v. ITC, 161 F.3d 696, 703-04, 48 USPQ2d 1880, 
1886-87 (Fed. Cir. 1998); Mas-Hamilton Group v. LaGard Inc., 156 
F.3d 1206, 1213, 48 USPQ2d 1010, 1016 (Fed. Cir. 1998) (``lever 
moving element for moving the lever'' and ``movable link member for 
holding the lever * * * and for releasing the lever'' were construed 
as means-plus-function limitations invoking 35 U.S.C. 112 para. 6 
since the claimed limitations were described in terms of their 
function not their mechanical structure).
    \7\ See 35 U.S.C. 112 para. 6. See also B. Braun Medical, Inc. 
v. Abbott Lab., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1899 (Fed. Cir. 
1997).
    \8\ See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; see also 
B. Braun Medical, 124 F.3d at 1425, 43 USPQ2d at 1900; and In re 
Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884-85 (Fed. Cir. 1997).
    \9\ See In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA 
1976) (unless the means-plus-function language is itself unclear, a 
claim limitation written in means-plus-function language meets the 
definiteness requirement in 35 U.S.C. 112 para. 2 so long as the 
specification meets the written description requirement in 35 U.S.C. 
112 para.  1).
    \10\ See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492-
93 (CCPA 1973).
    \11\ See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; 
Knowlton, 481 F.2d at 1366, 178 USPQ at 493.
    \12\ See Dossel, 115 F.3d at 946, 42 USPQ2d at 1885. Under 
proper circumstances, drawings may provide a written description of 
an invention as required by 35 U.S.C. para. 112. Vas-Cath, Inc. v. 
Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir. 
1991).
    \13\ See Dossel, 115 F.3d at 946-47, 42 USPQ2d at 1885 
(``Clearly, a unit which receives digital data, performs complex 
mathematical computations and outputs the results to a display must 
be implemented by or on a general or special purpose computer 
(although it is not clear why the written description does not 
simply state `computer' or some equivalent phrase.)'').
    \14\ In considering whether there is 35 U.S.C. 112 para. 1 
support for the claim limitation, the examiner must consider not 
only the original disclosure contained in the summary and detailed 
description of the invention portions of the specification, but also 
the original claims, abstract, and drawings. See In re Mott, 539 
F.2d 1291, 1299, 190 USPQ 536, 542-43 (CCPA 1976) (claims); In re 
Anderson, 471 F.2d 1237, 1240, 176 USPQ 331, 333 (CCPA 1973) 
(claims); In re Armbruster, 512 F.2d 676, 678-79, 185 USPQ 152, 153-
54 (CCPA 1975) (abstract); Anderson, 471 F.2d at 1240, 176 USPQ at 
333 (abstract); Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1564, 19 
USPQ2d at 1117 (drawings); In re Wolfensperger, 302 F.2d 950, 955-
57, 133 USPQ 537, 541-43 (CCPA 1962) (drawings).
    \15\ Even if the disclosure implicitly sets forth the structure, 
materials, or acts corresponding to a means-(or step-) plus-function 
claim element in compliance with 35 U.S.C. 112 Paras. 1 and 2, the 
PTO may still require the applicant to amend the specification 
pursuant to 37 CFR 1.75(d) and MPEP 608.01(o) to explicitly state, 
with reference to the terms and phrases of the claim element, what 
structure, materials, or acts perform the function recited in the 
claim element. See 35 U.S.C. 112 para. 6 (``An element in a claim 
for a combination may be expressed as a means or step for performing 
a specified function without the recital of structure, material, or 
acts in support thereof, and such claim shall be construed to cover 
the corresponding structure, material, or acts described in the 
specification and equivalents thereof.'' (emphasis added)); see also 
B. Braun Medical, 124 F.3d at 1424, 43 USPQ2d at 1900 (holding that 
``pursuant to this provision [35 U.S.C. 112 para. 6], structure 
disclosed in the specification is `corresponding' structure only if 
the specification or prosecution history clearly links or associates 
that structure to the function recited in the claim. This duty to 
link or associate structure to function is the quid pro quo for the 
convenience of employing 112, paragraph 6.''); Wolfensperger, 302 
F.2d at 955, 133 USPQ at 542 (just because the disclosure provides 
support for a claim element does not mean that the PTO cannot 
enforce its requirement that the terms and phrases used in the 
claims find clear support or antecedent basis in the written 
description).
    \16\ See Means or Step Plus Function Limitation Under 35 U.S.C. 
112, para. 6; 1162 Off. Gaz. Pat. Office at 59-60.
    \17\ See Donaldson, 16 F.3d at 1194, 29 USPQ2d at 1850 (stating 
that 35 U.S.C. 112 para. 6 ``merely sets a limit on how broadly the 
PTO may construe means-plus-function language under the rubric of 
`reasonable interpretation' '').
    \18\ See Noll, 545 F.2d at 149-50, 191 USPQ at 727 (the meaning 
of equivalents is well understood in patent law, and an applicant 
need not describe in his specification the full range of equivalents 
of his invention) (citation omitted). Cf. Hybritech Incorporated v. 
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 
(Fed. Cir. 1986) (``a patent need not teach, and preferably omits, 
what is well known in the art'').
    \19\ See 1994 Guidelines at 60; see also In re Mulder, 716 F.2d 
1542, 1549, 219 USPQ 189, 196 (Fed. Cir. 1983).

    Dated: July 21, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.
[FR Doc. 99-19368 Filed 7-29-99; 8:45 am]
BILLING CODE 3510-16-P